Ex Parte Walter et alDownload PDFPatent Trial and Appeal BoardSep 20, 201311648343 (P.T.A.B. Sep. 20, 2013) Copy Citation 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. 11/648,343 12/28/2006 Wolfgang E. Walter 6741P104 5050 45062 7590 09/20/2013 SAP/BSTZ BLAKELY SOKOLOFF TAYLOR & ZAFMAN 1279 Oakmead Parkway Sunnyvale, CA 94085-4040 EXAMINER ZHAO, YU ART UNIT PAPER NUMBER 2169 MAIL DATE DELIVERY MODE 09/20/2013 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 WOLFGANG E. WALTER and AMAR KUMAR ____________ Appeal 2011-000837 Application 11/648,343 Technology Center 2100 ____________ Before JEAN R. HOMERE, BRUCE R. WINSOR, and GEORGIANNA W. BRADEN, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 7-15. Claims 1-6 and 16-19 are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We affirm and enter a new ground of rejection within the provisions of 37 C.F.R. § 41.50(b). 1 The Real Party-in-Interest is SAP AG. App. Br. 3. Appeal 2011-000837 Application 11/648,343 2 STATEMENT OF THE CASE “[Appellants’] invention relates to computer user interfaces. More specifically, the invention relates to database-centric methods for creating and operating customized user interfaces.” Spec. ¶ [0001]. Claims 7, 8, and 14, which are illustrative of the invention, read as follows: 7. A computer-readable medium containing instructions to cause a programmable processor to perform operations comprising: retrieving information from a database, the information to describe a first hierarchical display configuration and a content of the first hierarchical display configuration; presenting the first hierarchical display configuration in a portion of a display screen; and populating the hierarchical display configuration with the content. 8. The computer-readable medium of claim 7 wherein the portion of the display screen is described by a second hierarchical display configuration; and the second hierarchical display configuration is described by information in the database. 14. The computer-readable medium of claim 7 wherein the content includes information from a web service. Claims 7-10, 13, and 14 stand rejected under 35 U.S.C. § 102(b) as anticipated by Banning (US 6,380,957 B1; Apr. 30, 2002). Ans. 3-8. Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Banning and Matsa (US 2005/0187912 A1; Aug. 25, 2005). Ans. 9-10. Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Banning and Krzanowski (US 7,360,166 B1; issued Apr. 15, 2008; filed Aug. 17, 2005). Ans. 10-12. Appeal 2011-000837 Application 11/648,343 3 Rather than repeat the arguments here, we refer to the Briefs (“App. Br.” filed Apr. 15, 2010; “Reply Br.” filed Aug. 30, 2010) and the Answer (“Ans.” mailed July 8, 2010) for the respective positions of Appellants and the Examiner. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). REJECTION OF CLAIMS 7-10, 13, AND 14 UNDER 35 U.S.C. § 102(b) AS ANTICIPATED BY BANNING ISSUES Appellants argue claims 7, 8, and 14 separately. See generally App. Br. 4-9. Appellants do not separately argue claims 9, 10, and 13 with particularity. See App. Br. 7. Accordingly, our discussion will refer to claims 7, 8, and 14. The issues presented by Appellants contentions are as follows: Did the Examiner err in finding that Banning discloses “retrieving information from a database, the information to describe a first hierarchical display configuration and a content of the first hierarchical display configuration,” as recited in claim 7? Did the Examiner err in finding that Banning discloses “the portion of the display screen is described by a second hierarchical display configuration,” as recited in claim 8? Did the Examiner err in finding that Banning discloses that “the content includes information from a web service,” as recited in claim 14? Appeal 2011-000837 Application 11/648,343 4 ANALYSIS Claim 7 The Examiner finds that Banning discloses “retrieving information from a database, the information to describe a first hierarchical display configuration and a content of the first hierarchical display configuration,” as recited in claim 7. See Ans. 3-4. The Examiner maps “retrieving information from a database, the information to describe” to “open[ing] the software to view directories, e.g. Explore, [Banning,] Fig 1A.” Ans. 4. The Examiner maps the “first hierarchical display configuration” to the structure of Banning’s directory tree 10 (Banning, Fig. 1A; see also Figs. 1B-1D, 4A- 4C) and the “content of the first hierarchical display configuration” to the directory tree members (e.g., “My Computer,” “Network,” “Recycle Bin”) of Banning’s directory tree 10 (id.). See Ans. 4. Appellants contend that the Examiner has failed to construe the phrase “hierarchical display configuration” consistently with the use of the phrase in the Specification. See generally App. Br. 5-7; Reply Br. 2-4. We disagree. Appellants contend that the plain meaning of “hierarchical display configuration” in light of the Specification is “a configuration of the display itself.” App. Br. 6. Accepting, arguendo, Appellants’ proposed claim construction, we note that Appellants concede that Banning’s directory tree is hierarchical (id.). Further, a tree format is a “configuration” of such a hierarchical display. See MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 242 (10th ed. 1999) (“configuration . . . n . . . 1 a: relative arrangement of parts or elements . . . .”). The heart of Appellants’ argument, then is that “the ‘directory tree members’ of Banning is [not] a configuration of a display” but is, instead, “a configuration of data simply presented on a Appeal 2011-000837 Application 11/648,343 5 display.” App. Br. 6. We disagree. First of all, the Examiner maps the “hierarchical display configuration” to Banning’s directory tree, not to the “directory tree members.” See Ans. 4. As illustrated in Banning’s Figures 1A-1D and 4A-4D, the directory tree 10, 30 establishes a display configuration upon which the directory tree members are displayed hierarchically, i.e., it is a configuration of the display itself. Appellants contend that “[a] computer display divided into window panes is an example of a hierarchical display configuration as consistent throughout the Specification. See e.g., Specification, paragraph 16. Information therefore describes how the display is divided into the panes.” App. Br. 5-6 (emphasis added). However, such an example is non-limiting. Indeed, Appellants’ Specification refers to the division of the display into panes as “an embodiment” (Spec. ¶ [0016] (emphasis added)), and that the information retrieved from the database describes, inter alia, “how (or whether) the display area is to be divided into panes” (id. (emphasis added)). Claims are to be given their broadest reasonable interpretation in light of the Specification, In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); however we may not import un-recited limitations into the claims from the Specification, SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Appellants have not identified persuasively any limitation of the claim or passage of the Specification that would preclude the recited “hierarchical display configuration” from encompassing Banning’s directory tree 10, 30 (Banning, Figs. 1A-1D, 4A-4C). Appellants have not persuaded us of error in the Examiner’s rejection of claim 7. Appeal 2011-000837 Application 11/648,343 6 Claim 8 Claim 8 depends from claim 7. Appellants contend that claim 8 is patentable for the same reasons as claim 7. App. Br. 7. We find this contention unpersuasive in view of our findings and conclusions regarding claim 7. The Examiner finds that Banning discloses that “the portion of the display screen is described by a second hierarchical display configuration,” as recited in claim 8. Ans. 5. The Examiner maps the “second hierarchical display configuration,” inter alia, to the configuration of the display when one of Banning’s plus “+” or minus “-” symbols is selected to expand or contract the Banning’s directory tree 10 (see Banning, col. 2, ll. 17-29; Figs. 1A, 1B). Ans. 5. Appellants contend “the Examiner’s assertion simply shows that in Banning, nodes presented on a display screen are hierarchical. No portion of the display screen is described by the plus and minus signs in Banning.” App. Br. 8. We agree with the Examiner. We note that the claim is silent as to whether the “first” (see claim 7) and “second hierarchical display configuration[s]” describe the portion of the display simultaneously or sequentially. When, for example, a user activates the plus symbol adjacent the directory tree member labeled “My Computer,” (Banning, Fig. 1A) information is retrieved to configure directory tree display 10 (the “hierarchical display”) (id.) to display, in pane 12 (i.e., “portion”) directory tree members that are subordinate to, or included in, the member labeled “My Computer”, e.g., the members labeled “3 ½ Floppy [A:],” “Hard Drive [C:]”, etc. (Banning Fig. 1B (brackets in originals)). Appeal 2011-000837 Application 11/648,343 7 Based on the foregoing, we are not persuaded that the Examiner erred in rejecting claim 8. The Examiner articulated additional mappings of the “second hierarchical display configuration,” each of which independently demonstrates that Banning discloses a “second hierarchical display configuration.” The Examiner finds (Ans. 5), and we agree, that Banning’s “Limit Expansion” tool (Banning, col. 6, ll. 61-67; Fig. 4A) further discloses a “second hierarchical display configuration.” When the tool is disabled, expansion and collapsing of directory tree nodes is allowed (i.e., a “first hierarchical display configuration”) and when the tool is enabled expansion and collapsing of directory tree nodes is prevented (i.e., a “second hierarchical display configuration”). The Examiner additionally explains (Ans. 26) that Banning’s disclosure of display pane 12, having a scroll bar 26 that enables a user to scroll through items in the directory tree 18 (See Banning, col. 2, ll. 17-29; Fig. 1B) is a further disclosure of a “second hierarchical display configuration.” Appellants contend: [A]n assertion that a scroll bar is used to scroll through a window pane says nothing about how a “portion of the display screen is described by a second hierarchical display configuration.” First, the Examiner has not provided an explanation and the Appellants have been unable to discern how a scroll bar could be considered hierarchical. Second, no portion of the display screen is described by the scroll bar in Banning. Instead, the scroll bar facilitates the viewing of data shown on the display. Reply Br. 5. We agree with the Examiner. As argued by Appellants the plain meaning of “hierarchical display configuration” in light of the Appeal 2011-000837 Application 11/648,343 8 Specification is “the configuration of the display itself.” App. Br. 6. Appellants concede that “[a] computer display divided into window panes is an example of a hierarchical display configuration as consistent throughout the Specification. See e.g., Specification, paragraph 16. Information therefore describes how the display is divided into the panes.” App. Br. 5-6 (emphasis added). Contrary to Appellants contentions, the Examiner has not found that Banning’s scroll bar is hierarchical or that it describes the display, rather the Examiner has found that in Banning the retrieved information describes a second configuration of the hierarchical display itself in which the display is divided into window panes (i.e., Banning’s “panes”) and is configured to include a scroll bar to permit further viewing the first configuration of the hierarchical display itself (i.e., Banning’s directory tree). Appellants have not persuaded us of error in the rejection of claim 8. Claim 14 Claim 14 depends from claim 7. Appellants contend that claim 14 is patentable for the same reasons as claim 7. App. Br. 8. We find this contention unpersuasive in view of our findings and conclusions regarding claim 7. The Examiner finds that Banning discloses that “the content includes information from a web service,” as recited in claim 14. Ans. 8. The Examiner maps the “information from a web service” to software and information electronically transferred by way of Banning’s Network 94, which may be connected to a BBS (Bulletin Board Service) or the Internet. Id. (citing Banning, col. 5, ll. 53-61; Figs. 1D (ref. 32 “Fs2”), 4B). Appeal 2011-000837 Application 11/648,343 9 Appellants contend that the Examiner erroneously equated a website with a web service, explaining that “[a]s understood by one of ordinary skill in the art, a web service is an application programming interface that can be accessed over a network and executed on a remote system hosting the requested services.” App. Br. 9. Appellants further contend that “[s]ince the Examiner effectively concedes that Banning does not disclose a web service, the issue of whether the system of Banning can handle a web service or provide the same view if a web service is involved is moot.” Id. In response, the Examiner explains as follows: A web service is a service (e.g. online storage, search engine etc.) provided on network (e.g. Internet, web, WWW). For example, a person can down load a software application from a website of an online storage. Claim 14 merely recites “the computer-readable medium of claim 7 wherein the content includes information from a web service.” By giving the broadest reasonable interpretation, claim 7 can be broadly interpreted as the content (e.g. information or data) is previously downloaded through the internet or network from web service [a] long time ago (Banning: column 5, lines 42-61, discloses “ ... to connect data processing system 20 to an on-line information service or an Internet service provider. Such service providers may offer software that can be down loaded into data processing system ... Network adapter 90 may be used to connect data processing system 20 to a local area network 94. Network 94 may provide computer users with means of communicating and transferring software and information electronically ... Network 94 can also provide a connection to other systems like those mentioned above (a BBS, the Internet, etc.).) Ans. 28-29. In other words, the Examiner explains that Banning’s disclosure of accessing an on-line information service (Banning col. 5, ll. Appeal 2011-000837 Application 11/648,343 10 44-48) discloses that the content of the hierarchical display includes information from the on-line information service, i.e., a “web service.” We find the Examiner’s explanation to be reasonable and not rebutted persuasively by Appellants. For emphasis, we note that Banning further discloses that the directory tree is expanded to reveal objects (i.e., directory tree “members” or “content”) residing in the “Entire Network” object, which the skilled person would understand to include objects from the on-line information service, i.e., a web service. CONCLUSION For the foregoing reasons we sustain the rejection of (1) independent claim 7; (2) dependent claims 8 and 14; and (3) dependent claims 9, 10, and 13, which depend from clam 7 and were not separately argued with particularity. REJECTION OF CLAIMS 11 AND 12 UNDER 35 U.S.C. § 103(a) AS UNPATENTABLE OVER BANNING AND MATSA Claims 11 and 12 depend from claim 7. Appellants contend that Matsa’s teachings do not remedy the alleged deficiencies of Banning’s teachings, discussed supra regarding claim 7, and therefore, claims 11 and 12 are patentable for the same reasons as claim 7. App. Br. 9. We find this contention unpersuasive in view of our findings and conclusions regarding claim 7. Appellants further contend that “claims 11 and 12 include additional limitations from independent claim 7, which were separately rejected and are thus separately patentable because the distinct rejection based on obviousness, rather than anticipation, does not allow for these claims to Appeal 2011-000837 Application 11/648,343 11 stand or fall with claim 7.” App. Br. 10. Appellants do not otherwise separately argue the patentability of claims 11 and 12 with particularity. Such generalized attorney allegations, which do not even point out what the claims recite, are not persuasive. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court [or the Board] to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). Accordingly, we sustain the rejection of claims 11 and 12. REJECTION OF CLAIM 15 UNDER 35 U.S.C. § 103(a) AS UNPATENTABLE OVER BANNING AND KRZANOWSKI Claim 15 depends from claim 7. Appellants contend that Krzanowski’s teachings do not remedy the alleged deficiencies of Banning’s teachings, discussed supra regarding claim 7, and claim 15 is, therefore, patentable for the same reasons as claim 7. App. Br. 10. We find this contention unpersuasive in view of our findings and conclusions regarding claim 7. Appellants further contend that “claim 15 includes additional limitations from independent claim 7, which were [sic; was] separately rejected and are [sic; is] thus separately patentable because the distinct rejection based on obviousness, rather than anticipation, does not allow for this claim to stand or fall with claim 7.” App. Br. 10. Appellants do not otherwise separately argue the patentability of claim 15 with particularity. Such a generalized attorney allegation, which does not even point out what the claim recites, is not persuasive. See Baxter Travenol, 952 F.2d at 391. Accordingly, we sustain the rejection of claim 15. Appeal 2011-000837 Application 11/648,343 12 NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b) Claims 7-15 are rejected on a new ground of rejection under 35 U.S.C. § 101 as directed to non-statutory subject matter. Our reviewing court has found that transitory, propagating signals are not within any of the four statutory categories (process, machine, manufacture, or composition of matter). Therefore, a claim directed to a computer readable storage medium embodied in a signal is not statutory under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007); see also Ex parte Mewherter, 2013 WL 4477509, Appeal No. 2012-007692 (PTAB May 8, 2013) (precedential). “A transitory propagating signal [however] . . . is not a ‘process, machine, manufacture, or composition of matter.’ [These] four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C § 101; thus, such a signal cannot be patentable subject matter.” Nuijten, 500 F.3d at 1357. According to U.S. Patent & Trademark Office (USPTO) guidelines: The broadest reasonable interpretation of a claim drawn to a computer readable medium . . . typically covers forms of non- transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, . . . . When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“OG Notice”) (citation omitted). Moreover, “[a] claim that covers both statutory and non-statutory embodiments . . . embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter,” MPEP Appeal 2011-000837 Application 11/648,343 13 § 2106(I) (8 th ed. 2001, rev. 2012) (citation omitted) (emphasis added). Cf. In re Lintner, 458 F.2d 1013, 1015 (CCPA 1972). Claim 7 recites “[a] computer-readable medium” and each of claims 8-15 recite “[t]he computer-readable medium.” The Specification states that “[a] machine-readable medium may include any mechanism for storing or transmitting information in a form readable by a machine (e.g., a computer) . . . .” Spec. [0029] (emphasis added). Although the Specification sets forth several examples of the machine (computer) readable medium, which are physical media, we conclude that nothing in the Specification or the claims precludes the computer readable medium from encompassing a transitory signal. 2 Accordingly, giving the phrase its broadest reasonable interpretation in light of the Specification, see In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), we construe the recited “computer-readable medium” to encompass a transitory signal and, therefore, to be directed to non-statutory subject matter. We note that Appellants are not precluded from amending claim 7 to overcome this rejection. Guidance is provided in the OG Notice (“A claim 2 We note that in an Amendment and Response to Office Action filed August 12, 2009, at page 6, Appellants purport to “explicitly disavow[] any claim to non-physical media, such as transmission media, carrier waves, or signals.” However, Appellants’ purported disavowal is not reflected in either the claims or the Specification, and, therefore, during prosecution is no more than attorney argument. “[T]he mode of claim interpretation that is used by courts in litigation . . . . is not the mode of claim interpretation that is applicable during prosecution of a pending application before the PTO . . . . The reason is simply that during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed. . . .” In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989) (citations omitted). Appeal 2011-000837 Application 11/648,343 14 drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation ‘non-transitory’ to the claim.”). ORDER The decision of the Examiner to reject claims 7-15 is affirmed. We enter a new ground of rejection for claims 7-15 under 35 U.S.C. § 101. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellants, 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: (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 proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. 37 C.F.R. § 41.50(b). Appeal 2011-000837 Application 11/648,343 15 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 37 C.F.R. § 41.50(b) kis Copy with citationCopy as parenthetical citation