Ex Parte Wassom et al

Board of Patent Appeals and Interferences

Feb 25, 2009

09582262 (B.P.A.I. Feb. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHN T. WASSOM JR. and JERRY L. HARRIS
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Appeal 2008-4761
Application 09/582,262
Technology Center 2100
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Decided:1 February 25, 2009
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Before ALLEN R. MACDONALD, ST. JOHN COURTENAY III, 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).
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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-50. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing for this appeal was conducted on February 12, 2009.
We reverse and enter a new ground of rejection under 35 U.S.C. § 101
against claim 1.

The Invention
The disclosed invention relates generally to managing navigation and
history information in a computer application or utility (Spec. 1).
Specifically, a computer application provides a global context for history
and navigation to a user (Spec. 7).
Independent claim 1 is illustrative:
1. A method of managing navigation information in a computer
application, the method comprising:

establishing a global context that can communicate with a
plurality of resources, each resource residing in an associated local
context;

communicating state information from one or more local
contexts to a global context;

maintaining global navigation information for the plurality of
resources using a single navigation interface based on the
communicated state information, wherein the plurality of resources
are separate and independent resources that include both browser and
non-browser applications; and
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presenting the global navigation information as an ordered list
of the resources representative of an order in which the resources were
accessed using the single navigation interface.

The Reference
The Examiner relies upon the following reference as evidence in
support of the rejections:
Bodnar US 6,544,295 B1 Apr. 8, 2003
(filed Nov. 18, 1996)

The Rejections
1. The Examiner rejects claims 1-35 and 37-50 under 35 U.S.C.
§ 102(e) as being anticipated by Bodnar.
2. The Examiner rejects claim 36 under 35 U.S.C. § 103(a) as being
unpatentable over Bodnar.

The Examiner’s Findings
The Examiner finds that Bodnar “presents a manageable list of
programs (non-browser application), Web sites (browser application) which
the user accesses by a single click” (Ans. 15) and that the “Quick marks
utility interface shows presenting the global navigation information [a] list
of the resources representative [of an order] in which the resources were
accessed using the single navigation interface” (Ans. 15).
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The Appellants’ Assertion
Appellants assert that “Bodnar does not describe or suggest that the
global navigation information is presented as an ordered list of resources
representative of an order in which the resources were accessed using the
single navigation interface” (Supp. App. Br. 3-4) because “there is no
indication that the buttons shown in Figure 3B, or the list of updated Quick
marks generated by selecting the “What’s New” button and shown in Figure
7, are presented as an ordered list of the resources representative of an order
in which the resources were accessed” (Reply Br. 2-3).

ISSUE
Did Appellants demonstrate that the Examiner erred in finding that
Bodnar discloses presenting global navigation information as an ordered list
of the resources representative of an order in which the resources were
accessed using a single navigation interface?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Bodnar discloses a “Quick marks utility 380” (col. 7, ll. 35-36) that
“displays the user’s most frequently used programs, Internet sites,
documents, and utilities as buttons” (col. 8, ll. 62-63).
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2. Claims 1, 28, 42, and 44 require presenting global navigation or
global-context history information as an ordered list of resources
representative of an order in which the resources were accessed using
a single navigation interface (Claims Appendix).

PRINCIPLES OF LAW
35 U.S.C. § 101
“A claimed process is . . . patent-eligible under § 101 if: (1) it is tied
to a particular machine or apparatus, or (2) it transforms a particular article
into a different state or thing.” In re Bilski, 545 F.3d 943, 954 (Fed. Cir.
2008). However, “even if a claim recites a specific machine or a particular
transformation of a specific article, the recited machine or transformation
must not constitute mere ‘insignificant postsolution activity’.” Id. at 957.

35 U.S.C. § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed Cir. 1999) “In other words, if granting patent protection on
the disputed claim would allow the patentee to exclude the public from
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practicing the prior art, then that claim is anticipated, regardless of whether
it also covers subject matter not in the prior art.” (Id.) (internal citations
omitted).
35 U.S.C. § 103(a)
Section 103 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., 127 S. Ct. 1727, 1734 (2007).

“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 127 S. Ct. at 1742 (2007). In KSR, the Supreme Court
emphasized "the need for caution in granting a patent based on the
combination of elements found in the prior art," Id. at 1739, and discussed
circumstances in which a patent might be determined to be obvious. KSR,
127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that "[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." Id. The
operative question in this "functional approach" is thus "whether the
improvement is more than the predictable use of prior art elements according
to their established functions." Id. at 1740.

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ANALYSIS
Bodnar discloses a “Quick marks utility 380” (col. 7, ll. 35-36) that
“displays the user’s most frequently used programs, Internet sites,
documents, and utilities as buttons” (col. 8, ll. 62-63). While Bodnar
discloses that resources (i.e., frequently used programs, Internet sites,
documents, and/or utilities) are displayed as buttons, we do not find, and the
Examiner has not demonstrated, that Bodnar also discloses or suggests that
the resources are displayed in “an order in which the resources were
accessed” as recited in independent claims 1, 28, 42, and 44. Indeed, the
Examiner has not shown that the resources of Bodnar are disclosed or
suggested to be displayed in any particular order at all.
Accordingly, we conclude that Appellants have met their burden of
showing that the Examiner erred in rejecting independent claims 1, 28, 42,
and 44, and of claims 2-27, 29-41, 43, and 45-50, which depend therefrom.
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II. New Ground of Rejection -- 37 C.F.R. § 41.50(b)
Using our authority under 37 C.F.R. § 41.50(b), we reject
claim 1 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.2
The Court of Appeals for the Federal Circuit recently held that “the
applicable test to determine whether a claim is drawn to a patent-eligible
process under § 101 is the machine-or-transformation test set forth by the
Supreme Court and clarified herein . . . .” In re Bilski, 545 F.3d at 966.
Appellants’ claim 1 does not transform physical subject matter. To the
extent that Appellants’ claims may transform data, we note that
transformation of data, without a particular machine, is insufficient to
establish patent-eligibility under § 101. See In re Bilski, at 961 (“[E]ven a
claim that recites ‘physical steps’ but neither recites a particular machine or
apparatus, nor transforms any article into a different state or thing, is not
drawn to patent-eligible subject matter.”).
Additionally, the claimed method is not both (a) limited to a practical
application of a fundamental principle to transform specific data, and
(b) limited to a visual depiction that represents specific physical objects or

2 The Board of Patent Appeals and Interferences is a review body, rather
than a place of initial examination. We have made a rejection above under
37 C.F.R. § 41.50(b). However, we have not reviewed claims 2-50 to the
extent necessary to determine whether these claims are also unpatentable
under 35 U.S.C. § 101. We leave it to the instant Examiner to determine the
appropriateness of any further rejections under § 101.
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substances. Bilski, 545 F.3d 943, 962-63 (discussing the transformation of
In re Abele, 684 F.2d 902 (CCPA 1982)).
We conclude that Appellants’ claim 1 does not require a particular
machine or apparatus and does not require the transformation of any article
into a different state or thing. As such, claim 1 is not directed to statutory
subject matter under 35 U.S.C. § 101.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have demonstrated that the Examiner erred in finding that
Bodnar discloses presenting global navigation information as an ordered list
of the resources representative of an order in which the resources were
accessed using a single navigation interface.

DECISION
We reverse the Examiner’s decisions rejecting claims 1-35 and 37-50
under 35 U.S.C. § 102(e) and claim 36 under 35 U.S.C. § 103.
In a new ground of rejection, we have rejected claim 1 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
In addition to reversing the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
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rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that 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:
(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. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED
37 C.F.R. § 41.50(b)

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