Ex Parte Zlotnick

Board of Patent Appeals and Interferences

Mar 12, 2008

09902733 (B.P.A.I. Mar. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte AVIAD ZLOTNICK
____________________

Appeal 2007-3026
Application 09/902,733
Technology Center 2600
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Decided: March 12, 2008
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Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI,
and KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-3, 5-14, 16-25 and 27-33. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing on this appeal was conducted on February
13, 2008. We reverse.

STATEMENT OF CASE
Appellant discloses a system and methods for improving the
efficiency of data input into a computer. (Spec. 1: 4-6). The system allows
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for verification of coding information whereby multiple “enter” buttons
appear on the computer screen at different locations. (Spec. 3: 12-15).
Claims 1-3, 5-14, 16-25 and 27-33 are pending in the application and
stand rejected over prior art. Independent claim 1, which is deemed to be
representative, reads as follows:
1. A method for increasing efficiency of interaction by an
operator with data on a computer display, comprising:

presenting the data to the operator in a plurality of data fields on
the computer display;

placing multiple redundant instances of an on-screen control at
different locations on the display in proximity to different ones
of the fields for selection by the operator using a pointing
device linked to the display; and

actuating the control responsive to the selection by the operator
of any of the instances of the control on the display.

The Examiner relies on the following prior art references to show
unpatentability:
Yeager US 5,950,190 Sep. 7, 1999
Kanatsu US 6,628,832 B2 Sep. 30, 2003

The Examiner rejected claims 1-2, 5-8, 11-13, 16-19, 22-24 and 27-30
and 33 under 35 U.S.C. § 102(b) as being anticipated Yeager. The Examiner
rejected claims 3, 9, 10, 14, 20, 21, 25, 31 and 32 under 35 U.S.C. § 103(a)
as unpatentable over Yeager and Kanatsu.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Brief, the Reply Brief and the Answer for their
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respective details. Only those arguments actually made by Appellant have
been considered in this decision. Arguments that Appellant did not make in
the Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

ISSUE
Has Appellant shown that the Examiner erred in finding claims 1-3, 5-
14, 16-25 and 27-33 anticipated or obvious by Yeager and Kanatsu?

FINDINGS OF FACT
1. The application details that data are presented to the operator in a
plurality of data fields on a computer display and multiple redundant
instances of an on-screen control are placed at different locations on the
display in proximity to the data fields to be selected by the operator using a
pointing device. When the operator has corrected all of the anomalous
results presented, any of the “done” buttons can be clicked to move on to
subsequent screens. An apparatus for performing the process, as well as
software to effectuate the process, are also disclosed. (Spec. 9: 12–27; Figs.
1 and 2B, elements 24, 26, 31, 37, 39, and 42).
2. Independent claim 1 recites, in part, “placing multiple redundant
instances of an on-screen control at different locations on the display,” and
independent claim 12 recites, in part, “to present the data in a plurality of
data fields on the display together with multiple redundant instances of an
on-screen control” and independent claim 23 recites, in part, “to present the
data to the operator in a plurality of data fields on the computer display
while providing multiple redundant instances of an on-screen control.”
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3. The Specification fails to provide an explicit definition of the claim
term “redundant,” and the Examiner and Appellant provide definitions of
that term. (App. Br. 11-12; Ans. 9). During the oral hearing conducted on
February 13, 2008, Appellant’s Representative indicated, in response to a
question, that a definition of “redundant” from the Brief, namely
“interchangeably perform the very same function,” was an acceptable
definition of the claim term.
4. Yeager discloses a dynamic database interface for relational and
object-oriented databases that includes a dynamic, self-modifying graphical
user interface defining a plurality of graphical windows for searching and
editing the contents of the relational database. A search window is provided
where the user can compose queries for different tables within the database,
where the window has rows of parameter buttons adjacent to separate input
fields. Between the parameter buttons and the input fields, the window
supplies pull-down lists that supply different mathematical operators that can
be applied. (Abstract; col. 9, l. 61 – col. 10, l. 65; Fig. 4, elements 50, 52, 53
and 54).
5. Kanatsu discloses a system for recognizing table data that have
been converted from a paper document through an optical character
recognition (OCR) process. The system allows for a user to correct cells of
the recognized table that contain errors. (Abstract; col. 1, ll. 6-16; col. 6, ll.
24-44).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
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art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Calif., 814 F.2d
628, 631 (Fed. Cir. 1987). The Examiner bears the initial burden of
presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992). If that burden is met, then the burden shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
See Id. The analysis need not seek out precise teachings directed to the
specific subject matter of the claim but can take into account the inferences
and the creative steps that a person of ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007).
During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech Center, 367 F.3d 1359,
1369 (Fed. Cir. 2004). When the specification states the meaning that a term
in the claim is intended to have, the claim is examined using that meaning,
in order to achieve a complete exploration of the applicant's invention and its
relation to the prior art. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
The definiteness inquiry focuses on whether those skilled in the art would
understand the scope of the claim when the claim is read in light of the rest
of the specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806
F.2d 1565, 1576 (Fed.Cir.1986).

ANALYSIS
Appellant argues that independent claims 1, 12 and 23 all contain the
limitation “redundant” (Findings of Fact 2), and that the limitation has been
mischaracterized by the Examiner in the rejection of those claims.
Appellant argues that the limitation “redundant” must be given its “plain
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meaning” in view of how that limitation has been used in the Specification
and claims. (App. Br. 9). Appellant also argues that the implication of the
limitation “multiple redundant instances of an on-screen control” is clear
from the description supplied in the Specification and that Yeager provides
on-screen controls where each has their own purpose and is not “redundant,”
as provided for in the independent claims. During the oral hearing for this
appeal, Appellant’s representative acknowledged that the limitation was not
defined in the Specification and proffered several definitions that would be
acceptable. (Findings of Fact 3).
The Examiner finds that Yeager provides multiple redundant instances
of an on-screen control because each pull-down list in the search window
has redundant mathematical operators, as well as other multiple redundant
buttons in the search window. (Ans. 9-10). The Examiner also finds that the
pull-down lists and input fields for each column are “excessive,” and thus
redundant. (Ans. 10). The Examiner also states that “[i]f the [A]ppellant
wanted to give the claims a specific meaning it should be explicit in the
claims.” (Ans. 10). We find, however, that Appellant has provided such
explicit refinement of the independent claims through the addition of the
limitation “redundant,” but that limitation has not been accorded its proper
meaning.
We accept the Appellant’s definition of redundant to be
“interchangeably perform the very same function,” and find that Yeager
does not provide such on-screen controls. We find that even if the
Examiner’s interpretation of “redundant” to mean “excessive” were
accepted, the controls of the search window in Yeager would not be
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excessive, because all of the controls have specific utility to the search
process that a user can conduct. For example, the “Barcode” can only be
searched for specific values and/or ranges using the mathematical operator
next to that parameter button. Given that each control has an explicit
function, we do not find that one of ordinary skill in the art would view the
on-screen controls of Yeager to be excessive or redundant. As such, we find
that Yeager does not disclose “multiple redundant instances of an on-screen
control,” as required by independent claims 1, 12 and 23, and the
anticipation rejection of those claims over Yeager has been made in error.
Appellant has also made specific arguments directed to Yeager not
disclosing all of the elements of claims 2, 5, 13, 16, 24 and 27. We need not
reach those arguments because we find the anticipation rejection of the
independent claims, from which those claims depend, to have been made in
error and thus we find clear error in the rejection of claims 1-2, 5-8, 11-13,
16-19, 22-24 and 27-30 and 33.
Appellant has not directed any arguments to the rejection of claims 3,
9, 10, 14, 20, 21, 25, 31 and 32 over Yeager and Kanatsu, but has argued,
(App. Br. 15-16), that Kanatsu fails to cure the deficiencies of Yeager,
discussed above, with respect to independent claims 1, 12 and 23. We agree
that Kanatsu fails to teach or suggest the use of “multiple redundant
instances of an on-screen control,” and we find the rejection of claims 3, 9,
10, 14, 20, 21, 25, 31 and 32 to also be in error by virtue of their dependence
on independent claims 1, 12 and 23.

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CONCLUSION OF LAW
We find that the Examiner erred in rejecting claims 1-3, 5-14, 16-25
and 27-33 under 35 U.S.C. §§ 102 and 103 based on Yeager and Kanatsu.

DECISION
The rejections of claims 1-3, 5-14, 16-25 and 27-33 are reversed.
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)(iv).

REVERSED

KIS

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