Ex Parte Tam

Patent Trial and Appeal Board

Feb 21, 2017

13844462 (P.T.A.B. Feb. 21, 2017)

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.
13/844,462 03/15/2013 David Tam 1301-026U 7310
112025 7590
CRGO LAW
7900 Glades Road
Suite 520
Boca Raton, EL 33434
EXAMINER
PARCHER, DANIEL W
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
02/23/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUGARCRM INC.1
Appeal 2016-004554
Application 13/844,462
Technology Center 2100
Before BRADLEY W. BAUMEISTER, JASON V. MORGAN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
'David Tam is listed as the Inventor.
Appeal 2016-004554
Application 13/844,462
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejections of claims 1—9. App. Br. I.2 We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claims 1—9 under 35 U.S.C. § 112,11.
BACKGROUND
Appellant describes the present invention as follows:
Embodiments of the invention provide a method, system
and computer program product for drag and drop manipulation
of object attribute values. In an embodiment of the invention, a
method for drag and drop manipulation of object attribute values
is provided. The method includes detecting a drop event for an
object in a [graphical user interface (GUI)] of an application
executing in memory of a computer. The method additionally
includes identifying a region of the GUI into which the object is
dropped and retrieving a value associated with the identified
region, [and] that is additionally associated with an attribute of
the object. Finally, the method includes setting the attribute of
the object with the retrieved value[.]
Abstract.
Independent claim 7, reproduced below with added emphasis, is
illustrative of the appealed claims:
2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the following documents for their details: the Final
Action mailed April 28, 2015 (“Final Act.”); the Appeal Brief filed
September 28, 2015 (“App. Br.”); the Examiner’s Answer mailed January 1,
2016 (“Ans.”); and the Reply Brief filed March 21, 2016 (“Reply Br.”).
2
Appeal 2016-004554
Application 13/844,462
7. A computer program product for drag and drop
manipulation of object attribute values, the computer program
product comprising:
a computer readable storage memory device storing
computer readable program code thereon, the computer readable
program code comprising:
computer readable program code for detecting a drop
event for an object in a graphical user interface (GUI) of an
application executing in memory of a computer;
computer readable program code for identifying a region
of the GUI into which the object is dropped;
computer readable program code for retrieving from the
identified region of the GUI a value associated with the identified
region, the value being additionally associated with an attribute
of the object; and,
computer readable program code for setting the attribute
of the object with the retrieved value.
Claims 7—9 stand rejected under 35 U.S.C. §101 for being directed to
non-statutory subject matter.
Claims 1, 4, and 7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Lee Barney & Michael McLaughlin, ORACLE DATABASE
AJAX & PHP WEB APPLICATION DEVELOPMENT, 2- 20 (2008)
(McGraw-Hill) (hereinafter “Barney”).
Claims 2, 5, and 8 stand rejected under 35 U.S.C. § 103(a) as obvious
over Barney in view of Prinsen (US 2007/0234227 Al; published
Oct. 4, 2007).
Claims 3, 6, and 9 stand rejected under 35 U.S.C. § 103(a) as obvious
over Barney, either alone (Final Act. 7—9) or alternatively in view of David
Sauer, gwt-dnd—Drag-and-Dropfor Google-Web-Toolkit (GWT),
June 29, 2011, https://gwt-dnd.appspot.com (cited project files from
3
Appeal 2016-004554
Application 13/844,462
http://code.google.com, last visited Dec. 8, 2014, have been preserved in the
record) (hereinafter “Sauer”) (Ans. 9-11).
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
THE SECTION 101 REJECTION OF CLAIMS 7-9
Findings and Contentions
Claims 7—9 recite “a computer readable storage memory device
storing computer readable program code thereon.” The Examiner finds that
this language can be interpreted to read on “a computer readable storage
means,” and that such a means, in turn, reads on signals and carrier waves.
Ans. 3. The Examiner, therefore, concludes that claims 7—9 are directed to
non-statutory subject matter under 35 U.S.C. § 101. Id.
The Examiner bases this conclusion upon the view that the term
“device” is broad enough to read on “‘something that is done to achieve a
particular effect’ such as in the example ‘. . . mnemonic device for
remembering the names of planets’.” Id. (citing Merriam-Webster Online
Dictionary). Appellant argues, though, that it is not reasonable to interpret
the term so broadly because, inter alia, paragraph 22 of Appellant’s
Specification distinguishes a computer readable storage medium from a
computer readable signal medium. App. Br. 6. Appellant urges that based
upon the Specification, “the person of skill in the art would only understand
‘device’ to mean ‘an object, machine or piece of equipment that has been
made for some special purpose.’” Id. at 5.
4
Appeal 2016-004554
Application 13/844,462
Analysis
[Patent claims] are part of a fully integrated written instrument,
. . . consisting principally of a specification that concludes with
the claims. For that reason, claims must be read in view of the
specification .... [T]he specification is always highly relevant
to the claim construction analysis. Usually, it is dispositive; it is
the single best guide to the meaning of a disputed term.
Phillips v. AWHCorp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (internal
citations and internal quotation marks omitted).
In the present case, Appellant’s Specification does explain that a
computer readable medium within the meaning of the invention “may be a
computer readable signal medium or a computer readable storage medium.”
Spec. 122. The Specification then explains the difference between
computer readable storage media and signal media:
A computer readable signal medium may include a
propagated data signal with computer readable program code
embodied therein, for example, in baseband or as part of a carrier
wave. Such a propagated signal may take any of a variety of
forms, including, but not limited to, electro-magnetic, optical, or
any suitable combination thereof. A computer readable signal
medium may be any computer readable medium that is not a
computer readable storage medium and that can communicate,
propagate, or transport a program for use by or in connection
with an instruction execution system, apparatus, or device.
Spec. 123 (emphasis added).
In contrast,
[a] computer readable storage medium may be, for
example, but not limited to, an electronic, magnetic, optical,
electromagnetic, infrared, or semiconductor system, apparatus,
or device, or any suitable combination of the foregoing. More
specific examples (a non-exhaustive list) of the computer
readable storage medium would include the following: an
electrical connection having one or more wires, a portable
5
Appeal 2016-004554
Application 13/844,462
computer diskette, a hard disk, a random access memory (RAM),
a read-only memory (ROM), an erasable programmable read­
only memory (EPROM or Flash memory), an optical fiber, a
portable compact disc read-only memory (CD-ROM), an optical
storage device, a magnetic storage device, or any suitable
combination of the foregoing. In the context of this document, a
computer readable storage medium may be any tangible medium
that can contain, or store a program for use by or in connection
with an instruction execution system, apparatus, or device.
Spec. 122 (emphasis added).
These passages reasonably indicate that a computer readable storage
memory device is a subset of the more general recitation of a computer
readable storage medium. Furthermore, Appellant’s Specification expressly
limits what constitutes a computer readable storage medium so as to exclude
signals and carrier waves. Id. 22—23. As used within Appellant’s
Specification, signals and carrier waves are alternatively classified as
computer readable signal media. Id. 122.
As such, the Examiner relied upon an unreasonably broad
construction when interpreting the claim term “computer readable storage
memory device” to read on a signal or carrier wave per se. We, therefore,
do not sustain the rejection of claims 7—9 under 35 U.S.C. § 101.
THE ART-BASED REJECTIONS OF CLAIMS 1-9
Findings and Contentions
The Examiner finds that Barney teaches every limitation of
independent claims 1, 4, and 7. Final Act. 3^4; Ans. 3—7. Appellant
contends, though, that Barney does not disclose “the retrieval from the
identified region of the GUI of a value associated with the identified region
6
Appeal 2016-004554
Application 13/844,462
and the setting of an attribute of the object with that value,” as recited in
claim 1 and similarly recited in claims 4 and 7. App. Br. 7.
In response, the Examiner explains why “[t]he phrase ‘identifying a
region of a GUI, ’ as recited in claim 1, can reasonably be interpreted to refer
to the identification of a coordinate on a GUI.” Ans. 4—5. The Examiner
explains that “to the extent that [Ajppellant may be referring to a region as a
distinct object with its own attributes, such an object appears to be
incommensurate in scope with appellant’s disclosure, and such an
interpretation is not required by the claim language.” Id. at 5. The
Examiner further explains that the adopted interpretation is consistent with
the Windows application program interface (API) example cited by
Appellant. Id.
Based on these interpretations, the Examiner concludes that
“retrieving from the identified region of the GUI a value,” as claimed, reads
on evaluating the left hand side of the equation that defines the current
location of the object. Ans. 6. The Examiner further reasons that
[the adopted] interpretation is not only consistent with
Appellant’s specification, it is the only apparent interpretation
the examiner finds consistent with the disclosure. Appellant
states that support can be found in specification |0020
(Appellant’s Appeal Brief Page 2). Specification |0020 does not
use the claim language “from the identified region of the GUI”,
nor does that language appear anywhere else in the specification.
Id. at 7.
Analysis
The Examiner provides evidence that Barney discloses retrieving a
value that is associated with the identified region and with an attribute of an
object. See Ans. 4—7. However, the Examiner does not sufficiently
7
Appeal 2016-004554
Application 13/844,462
demonstrate that the value is retrieved, more specifically, from the identified
region of the GUI, as argued by Appellant. Instead, the above-noted
reasoning indicates the Examiner implicitly acknowledges that Barney does
not disclose this claim language, but that the Examiner excuses this omission
on the basis that the contested claim language is not supported by
Appellant’s originally filed Specification. Ans. 7.
The fact that some unambiguous claim language may not be supported
by the Specification is not a sufficient basis to conclude that the claim
language, therefore, must mean something other than what is recited.
Accordingly, we do not sustain the Examiner’s anticipation rejection of
independent claims 1, 4, and 7.
With respect to the remaining rejections of dependent claims 2, 3, 5,
6, 8, and 9 under 35 U.S.C. § 103(a), the Examiner’s additional cited
evidence and reasoning (Final Act. 6—11) does not cure the deficiency of the
anticipation rejection explained above. We, therefore, do not sustain either
of these obviousness rejections.
WRITTEN DESCRIPTION OF CLAIMS 1-9 UNDER 35 U.S.C. § 112,11
In this section we further address the Examiner’s finding (Ans. 7) that
the originally filed Specification does not provide adequate support for the
claim language “retrieving from the identified region of the GUI a value,” as
recited in independent claim 1 and similarly recited in independent claims 4
and 7. To be sure, this language did not appear in the claims as originally
presented. See Spec., Claim App. (as filed Mar. 15, 2013). Rather, this
language was added by claim amendment in Appellant’s response to the
8
Appeal 2016-004554
Application 13/844,462
Non-Final Action mailed December 19, 2014. Non-Final Response 2—6
(filed Mar. 19, 2015).
We, therefore, look to the originally filed written Specification to
determine whether the claims are supported by adequate written description.
The test for determining compliance with the written description
requirement is whether the disclosure of the application as
originally filed reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed subject
matter, rather than the presence or absence of literal support in
the specification for the claim language.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (internal citations
omitted).
Appellant states that paragraph 20 of the originally filed Specification
provides support for this amended claim language relating to retrieving a
value from the identified region of the GUI. App. Br. 2; see also Non-Final
Response 7 (citing Spec. 116 as providing support).
These cited portions of the Specification, as well as related passages
read as follows:
[0016] Importantly, the GUI 110 can be configured to respond to
a drag and drop event for the object 130 by identifying the
display region 120B into which the object 130 is dropped and a
corresponding value 150B for the display region 120B.
Thereafter, the GUI 110 can direct an operation 160 for the
method member 140 of the object 130 to update the data member
of the object 130 with the corresponding value 150B of the
display region 120B. In this way, the data member of the object
130 can be updated with the corresponding value 150B with a
single drag and drop operation.
• • • •
[0018] A drag and drop module 300 can be coupled to the
application 230 and the GUI 240. The drag and drop module 300
can include program code enabled upon execution in the memory
9
Appeal 2016-004554
Application 13/844,462
of the host computing system 210 to respond to a drag and drop
event for an object in the GUI 240 by identifying a region of the
GUI 240 in which the object has been dropped. A value for an
attribute of the object that is associated with the identified region
can be determined by the program code of the module 300 and
the program code of the module 300 can invoke a method
member of the object to set the attribute of the object with the
value. In this way, attribute values of an object can be
manipulated through drag and drop operations.
[0019] In even yet further illustration of the operation of the drag
and drop module 300, Figure 3 is a flow chart illustrating a
process for drag and drop manipulation of object attribute values.
Beginning in block 310, an attribute set for objects of an
application can be loaded and in block 320, a particular one of
the attributes can be selected. In block 330, the value of the
particular one of the attributes for each of the objects can be
determined and in block 340, each of the objects can be placed
in a specific region of a GUI of the application according to a
value of the particular one of the attributes encapsulated within
the object.
[0020] In block 350, a drag and drop event can be detected for
the object. Thereafter, in response in block 360 a region of the
GUI into which the object is dropped can be identified and a
value for the particular one of the attributes associated with the
region can be retrieved in block 370. Finally, in block 380 a
method member of the object can be invoked to set a value of the
particular one of the attributes of the object with the value
retrieved for the region of the GUI into which the object had been
dropped.
Spec. H16—20 (emphasis added).
While these passages provide support for retrieving a value associated
with the identified region, as well as the value being additionally associated
with an attribute of the object, no portion of the cited passage provides
further support for the amended claim language of retrieving the value “from
the identified region of the GUI,” as recited in independent claims 1, 4, and
10
Appeal 2016-004554
Application 13/844,462
7. Nor can we ascertain adequate support anywhere else in Appellant’s
written Specification.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b),
then, we enter a new ground of rejection for claims 1—9 under 35 U.S.C.
§112, first paragraph, for lacking adequate written description.
CONCLUSIONS
We do not sustain the Examiner’s rejection of claims 7—9 under
35 U.S.C. § 101.
We do not sustain the Examiner’s rejection of claims 1—9 under
35 U.S.C. §§ 102(b) and 103(a).
We exercise our discretionary authority under 37 C.F.R. § 41.50(b),
entering a new ground of rejection for claim 1—9 under 35 U.S.C. § 112,11,
for lacking adequate written description.
DECISION
The Examiner’s decision rejecting claims 1—9 is reversed.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claims 1—9. Rule 41.50(b) provides that
“[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.” Rule 41.50(b) also provides the
following:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
11
Appeal 2016-004554
Application 13/844,462
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under §41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01
(9th Ed., Rev. 9, Nov. 2015).
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)(l)(iv).
REVERSED
37 C.F.R, § 41.50(b)
12