Ex Parte Sauermann

Board of Patent Appeals and Interferences

Jul 12, 2010

10919749 (B.P.A.I. Jul. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/919,749 08/16/2004 Volker Sauermann 11884/417301 6621
26646 7590 07/12/2010
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
WIENER, ERIC A
ART UNIT PAPER NUMBER
2179
MAIL DATE DELIVERY MODE
07/12/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte VOLKER SAUERMANN
_____________

Appeal 2009-006854
Application 10/919,749
Technology Center 2600
______________

Before ROBERT E. NAPPI, JAY P. LUCAS, and BRADLEY W.
BAUMEISTER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006854
Application 10/919,749

This is a decision on appeal under 35 U.S.C. § 6(b) of the rejection of
claims 1 through 30 and 32 through 36.
We reverse.
INVENTION
The invention is directed to a system to present a user of computer
application information regarding which items conform to predetermined
parameters for performance of an operation. See Paragraphs 8, 18 and 19 of
Appellant’s Specification. Claim 1 is reproduced below:
1. A system for performing item operations, comprising:
a graphical user interface (GUI); and
a processor configured to display in a display area of the GUI:
a button that corresponds to an operation, the operation to be
performed [sic: being] one of on and for a particular item upon a first
condition that the particular item conforms to a predetermined
parameter; and
a table that includes a list of a plurality of items and a flag
column that is presented in response to a selection of the button;
wherein data of a particular row of the flag column
indicates whether a corresponding item of the particular row
conforms to the predetermined parameter.

REFERENCES
Looney US 6,232,539 B1 May 15, 2001

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Application 10/919,749

REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 30 and 32 through 36
under 35 U.S.C. § 102(b) as being anticipated by Looney. The Examiner’s
rejection is on pages 3 through 24 of the Answer.2

ISSUES
Claims 1 through 27 and 36.
Appellant argues on pages 6 through 9 of the Brief3 that the
Examiner’s rejection of claims 1 through 27 and 36 under 35 U.S.C.
§ 102(b) is in error. Appellant argues that Looney does not teach the
limitation of independent claims 1, 14, 27, and 36 related to a column flag
being presented in response to a button that corresponds to an operation
performed upon a condition that an item conforms to a predetermined
parameter.
Thus, Appellant’s contentions with respect to independent claims 1,
14, 27, and 36 presents us with the issue: did the Examiner err in finding that
Looney teaches a column flag being presented in response to a button as
claimed.
Claims 28
Appellant argues on pages 9 through 12 of the Brief that the
Examiner’s rejection of claim 28 under 35 U.S.C. § 102(b) is in error.
Appellant argues that Looney does not teach the limitation of independent

2 Throughout this decision we refer to the Examiner’s Answer dated
September 17, 2008.
3 Throughout this decision we refer to the Appeal Brief dated August 25,
2008 and Reply Brief dated November 13, 2008.
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Application 10/919,749

claim 28 directed to upon receiving a command, highlighting a flag in the
flag column when an item conforms to a parameter and performing an
operation upon the determining that the item conforms to the predetermined
parameter.
Thus, Appellant’s contentions with respect to independent claim 28
presents us with the issue: did the Examiner err in finding that Looney
teaches a performing operations as recited in claim 28.
Claim 29 through 35
Appellant’s arguments on pages 12 through 17 of the Brief directed to
claims 29, 30, 32, 33, 34 and 35 present issues similar to those discussed
above with respect to claims 1 and 28.

FINDINGS OF FACT
Looney
1. Looney teaches a music organizer. The organizer has a user
interface which depicts the songs in the search list (item 451, Figure
14), the songs in the current play list (item 430, Figure 13) and
presents a series of buttons identifying the categories of songs (item
382, Figure 13). Abstract, col. 9, ll. 16-20, 38-40 and 48-51.
2. Songs are added to the play list based upon the users’ selection of
time (using block 420, Figure 13) and speed of music. Based upon
these parameters the system fills the play list. Col. 9, ll. 26-35.
3. The system also has a “create favorite hits” button, when the user
selects this button and then identifies a song; the song is flagged in
the play list (item 798, Figure 23). Col. 13, ll. 50-54.

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Application 10/919,749

ANALYSIS

Claims 1 through 27 and 36.
Appellant’s arguments have persuaded us that the Examiner erred in
finding that Looney teaches a column flag being presented in response to a
button as claimed. Independent claim 1 recites a button that corresponds to
an operation to be performed on an item based upon the item conforming to
a parameter. Claim 1 further recites that a flag column in a table is
presented in response to selection of the button. Independent claims 14, 27,
and 36 recite similar limitations. The Examiner in rejecting these claims
relies upon Looney’s teaching of the “create favorites hits” button in Figure
23 and described in column 10, lines 49-52 and column 13, lines 47-65.
Answer 14. We do not concur with the Examiner’s findings. We do concur
with the Examiner that Figure 23 of Looney does show a flag field item 798,
and that the identification of a flag in this field represents that the user has
selected the song as a favorite hit. Fact 3. However, we find that the
Examiner has not shown that the selection of the favorite hits button causes
an operation to be performed based on the item (assumedly the song)
conforming to a parameter. Rather, the selection of the favorite hits button
enables the user to enter more data (create the flag) about the item.
Accordingly, we will not sustain the Examiner’s rejection of claims 1
through 27 and 36.
Claims 28 and 34
Appellant’s arguments have persuaded us that the Examiner erred in
finding that Looney teaches performing operations as recited in independent
claim 28. Claim 28 recites that there is a flag column indicating an item
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conforms to a predetermined parameter. Method claim 28 also recites in
response to a receiving a command to perform an operation, highlighting the
flag column which indicates an item conforms to a parameter and
performing an operation upon determining that that one item conforms to the
predetermined parameter. Independent method claim 34 recites similar
limitations. The Examiner, in rejecting claim 28, relies upon Looney’s
teaching of the “create favorites hits” button in Figure 23 and described in
column 10, lines 49-52 and column 13, lines 47-65. Answer 17. As
discussed above with respect to claim 1, we find that the Examiner has not
shown that the selection of the favorite hits button causes an operation to be
performed based on the items (assumedly the songs) conforming to a
parameter. Accordingly, we will not sustain the Examiner’s rejection of
claims 28 and 34.
Claim 29
Appellant’s arguments have persuaded us that the Examiner erred in
rejecting independent claim 29. Method claim 29 recites that in response to
receiving a command to perform an operation on items in a table, displaying
a flag column that indicates whether each of the items conforms to a
parameter upon which is conditioned performance of the operation. As with
the rejection of independent claims 1 and 28, the Examiner’s rejection relies
upon Looney’s teaching of the “create favorites hits” button. Answer 18.
As discussed above with respect to claim 1, we find that the Examiner has
not shown that the selection of the favorite hits button causes an operation to
be performed based on the items (assumedly the songs) conforming to a
parameter. Accordingly, we will not sustain the Examiner’s rejection of
claim 29.
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Claims 30 and 35
Appellant’s arguments have persuaded us that Examiner erred in
rejecting independent claims 30 and 35. Independent claim 30 recites
determining if a plurality of items conform to a parameter (where an
operation is conditioned upon the item conforming to the parameter),
providing an indication of which items conform to the parameter, and
performing the operation. Independent claim 35 includes similar limitations.
As with the rejection of independent claims 1 and 28, the Examiner’s
rejection relies upon Looney’s teaching of the “create favorites hits” button.
Answer 6, 7, 9, and 10. Additionally unlike the other claims, we note that
the Examiner has not responded to Appellant’s arguments directed to these
claims. As discussed above with respect to claim 1, we find that the
Examiner has not shown that the selection of the favorite hits button causes
an operation to be performed based on the items (assumedly the songs)
conforming to a parameter. Accordingly, we will not sustain the Examiner’s
rejection of claims 30 and 35.

Claims 32 and 33
Appellant’s arguments have persuaded us that Examiner erred in
rejecting independent claim 32. Claim 32 recites the step of, in response to
receiving a command to perform an operation for selected items, providing a
display area indicating the reason for the operation’s applicability or
inapplicability to the item. As with the rejection of independent claims 1
and 28, the Examiner’s rejection relies upon Looney’s teaching of the
“create favorites hits” button. Answer 19. As discussed above with respect
to claim 1, we find that the Examiner has not shown that the selection of the
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favorite hits button causes an operation to be performed based on the items
(assumedly the songs) conforming to a parameter. Accordingly, we will not
sustain the Examiner’s rejection of claims 32 and 33.

CONCLUSION
Appellant have persuaded us of error in the Examiner’s rejection of
claims 1 through 30 and 32 through 36.

ORDER
The decision of the Examiner to reject claims 1 through 30 and 32
through 36 is reversed.

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Appeal 2009-006854
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REVERSED

ELD

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