Ex Parte 6738770 et al

Patent Trial and Appeal BoardNov 28, 2014

95000625 (P.T.A.B. Nov. 28, 2014)

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. 95/000,625 04/19/2011 6738770 120443-002REX 2003 27189 7590 12/01/2014 PROCOPIO, CORY, HARGREAVES & SAVITCH LLP 525 B STREET SUITE 2200 SAN DIEGO, CA 92101 EXAMINER WOOD, WILLIAM H ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/01/2014 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 ____________ DEEP SKY SOFTWARE, INC. Patent Owner and Appellant v. SOUTHWEST AIRLINES CO. Requester and Respondent ____________ Appeal 2014-008596 Reexamination Control 95/000,625 Patent 6,738,770 B2 Technology Center 3900 ____________ Before RICHARD M. LEBOVITZ, DAVID M. KOHUT, AND IRVIN E. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge. Appeal 2014-008596 Reexamination Control 95/000,625 Patent 6,738,770 B2 2 DECISION ON APPEAL Patent Owner Deep Sky Software, Inc. (“Deep Sky” or “Patent Owner”) appeals the Examiner’s decision to reject claims 5–8, 10, 12, 16, 19, 21, 25, 27, 30–35, 37, 41, 42, 45, 46, and 49. App. Br. 1.1 Claims 1–4, 9, 11, 13–15, 17, 18, 20, 22–24, 26, 28, 29, 36, 38–40, 43, 44, 47, and 48 are not subject to reexamination. We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm. STATEMENT OF THE CASE Southwest Airlines Co. (“Southwest” or “Requester”) filed a request for inter partes reexamination on April 19, 2011, of claims 5–8, 10, 12, 16, 19, 21, 25, 27, 30–35, 37, 41, 42, 45, 46, and 49 of United States Patent 6,738,770 B2 (the “’770 Patent”), which issued to John G. Gorman on May 18, 2004. The ’770 Patent pertains to filtering and sorting data. Specifically, a filter cell, associated with columns in a data table, receives filter criteria then filters and sorts data cells accordingly. Abstract. Claim 5, which is illustrative of the appealed subject matter, reads as follows: 5. A method of managing data, the method comprising: 1 Throughout this opinion, we refer to (1) the Right of Appeal Notice mailed Mar. 28, 2013 (“RAN”); (2) Patent Owner’s Appeal Brief filed Nov. 11, 2013 (“App. Br.”); (3) Requester’s Respondent Brief filed Dec. 5, 2013 (“Req. Resp. Br.”); (4) the Examiner’s Answer mailed Feb. 26, 2014 (“Ans.”); and (5) Patent Owner’s Rebuttal Brief filed Mar. 26, 2014 (“Reb. Br.”). Appeal 2014-008596 Reexamination Control 95/000,625 Patent 6,738,770 B2 3 displaying in a window a plurality of filter cells and a table comprising a plurality of rows and columns of data cells, wherein the content of each of the data cells belongs to at least one data set, wherein each of the columns or rows has an associated sort procedure, and wherein each of the data cells is associated with at least one of the filter cells; receiving filter criteria via one of the filter cells; identifying which ones of the associated data cells contain data that satisfies the filter criteria of the filter cell that is associated with the data cells; and sorting the data sets of the identified data cells, wherein the sorting is based at least in part upon one of the sort procedures, and wherein the identifying and sorting are done in response to receiving character-by-character input or upon the lapse of a preset pause period. RELATED PROCEEDINGS On April 30, 2014, in Inter Partes Reexamination Control No. 95/000,626, this panel found unpatentable claims 4, 5, 15–23, 27–38, and 43–48 of U.S. 7,370,047 B2 (“the ’047 patent”), a child of the ’770 patent. THE PRIOR ART Groff et al. US 5,787,411 July 28, 1998 Marshall et al. US 5,926,806 July 20, 1999 Spaey et al. US 2002/0055981 A1 May 9, 2002 Microsoft Corp., INTRODUCING MICROSOFT WINDOWS 95 (Help Program included in Windows 95) (1995) (herein “Microsoft 1”). Microsoft Corp., WINDOWS 95 HELP AUTHORING KIT (1995) (herein “Microsoft 2”). Mark R. Brown, USING NETSCAPE COMMUNICATOR 4 (1997) (herein “Brown”). Appeal 2014-008596 Reexamination Control 95/000,625 Patent 6,738,770 B2 4 Brian Shea et al., VISUAL BASIC SOURCE CODE LIBRARY (Jan. 1999) (herein “Shea”). Thomas Chester & Richard H. Alden, MASTERING EXCEL 97 (4 th ed.1997) (herein “Chester”). THE EXAMINER’S REJECTIONS Patent Owner appeals the Examiner’s rejecting the claims as follows: Claims 5–8, 12, 16, 19, 21, 25, 30–34, 37, 41, 42, and 46 under 35 U.S.C. § 102(e) as anticipated by Spaey; Claims 5–8, 10, 12, 16, 19, 21, 25, 27, 30–35, 37, 41, 42, 45, 46, and 49 under 35 U.S.C. § 103(a) as obvious over Marshall in view of Microsoft 2; Claims 5–8, 10, 12, 16, 19, 21, 25, 27, 30–35, 37, 41, 42, 45, 46, and 49 under 35 U.S.C. § 103(a) as obvious over Groff, Marshall, and Brown; and Claims 5–8, 10, 12, 16, 19, 21, 25, 27, 30–35, 37, 41, 42, 45, 46, and 49 under 35 U.S.C. § 103(a) as obvious over Chester in view of Shea. THE OBVIOUSNESS REJECTION OVER GROFF, MARSHALL AND BROWN The Examiner found the combination of Groff, Marshall, and Brown teaches or suggests the elements of all claims subject to reexamination, concluding the claims to be unpatentable as obvious. RAN 6 (referencing Request for Inter Partes Reexamination, Appendix D, pp. 1–50, filed Apr. 8, 2011 (“Request”)). Groff discloses selecting records from a displayed Appeal 2014-008596 Reexamination Control 95/000,625 Patent 6,738,770 B2 5 database table for filtering in accordance with user-selected cell values. Groff, Abstract. Marshall discloses displaying information from related tables of a database in different display windows. The windows are interlinked such that a selection of an entry in one window causes another window to display entries related to the selection. Marshall, Abstract. Brown discloses operation of a web browser, including character-by- character searching (Brown 253–254) and message sorting (id. at 263) associated with newsgroups. Claim 5 Patent Owner argues the rejection of claim 5 is erroneous because neither Groff nor Marshall discloses filter cells or sorting, and there is no motivation to combine the references. PO App. Br. 14–17. We are unpersuaded of error. Patent Owner’s argument that “Groff fails to disclose even a single ‘filter cell’” (Id. at 15) is unavailing because the Examiner also cited Marshall for the claimed filter cells. Action Closing Prosecution (“ACP” mailed Aug. 30 2012) p. 14. Marshall’s list boxes, including “list box 116,” “list[] or otherwise display[] multiple entries with a row and column format” (5:19–20), and Marshall’s “group drop down list box 122” includes entries such as “Retailers” which, upon selection by a user, operate to display in list box 116 entries matching the customer-selected filter criteria. See, e.g., Fig. 1, 7: 5–20, 9:2–9 and 14–65, and 15: 31–46 (further explaining Fig. 1 element functionality). In view of the foregoing, we find Marshall’s group drop down list boxes 122, 138, and 154 teach or suggest the claimed “plurality of filter cells.” Appeal 2014-008596 Reexamination Control 95/000,625 Patent 6,738,770 B2 6 We are unpersuaded of error based on Patent Owner’s argument against this interpretation of Marshall wherein the claimed filter cells read on Marshall’s “group drop down list boxes.” PO App. Br. 15. Patent Owner states that “Marshall merely discloses that a drop down list box is used to highlight groups of entries in the list boxes [and] does not disclose that any sorting of a list box is performed in response to the selection of a group designator from a group drop down list box.” Id. This is unpersuasive because, for sorting, the Examiner cited Groff. ACP p. 14. Groff discloses sorting at least at Figure 18. Patent Owner’s argument that “Groff does not disclose any filter cell that is separate and distinct from the data cells depicted in Figure 6 of Groff, let alone, a filter cell that is capable of ‘receiving filter criteria,’” (PO App. Br. 15) is moot because Marshall is cited for the claimed “filter cells.” Patent Owner argues that “a person having ordinary skill in the art would not have been motivated to combine the references of Groff, Marshall, and Brown in the manner proposed by the Examiner.” PO App. Br. 17; see also PO App. Br. 15–17. Patent Owner’s arguments in this regard are unavailing generally because, as pointed out by Requester, Patent Owner “does not actually address the Examiner’s proposed combination [but instead] invents combinations that would be unworkable.” Req. Resp. Br. 16. Patent Owner does not persuasively rebut the Examiner’s finding that “it would have been obvious to combine certain features from any of the identified references for the purpose of creating a more user-friendly interface for searching, sorting, and filtering large data sets.” ACP p. 16 (citing Request p. 58). Appeal 2014-008596 Reexamination Control 95/000,625 Patent 6,738,770 B2 7 Patent Owner argues that “[t]he Examiner appears to propose replacing the data cells in Groff with the group drop down list boxes of Marshall.” PO App. Br. 16. This argument is unavailing of error because the Examiner has not proposed “replacing” Groff’s data cells. Patent Owner argues that “there is no motivation to combine the incremental news group searching feature of Brown with either the data cells of Groff or the group drop down list boxes of Marshall.” Id. Patent Owner asserts that the Examiner’s proposed modification “would replace the data cells in Groff with search boxes to search the data cells,” which is “absurd’ and “technically impossible or useless, since it proposes replacing the things to be searched (i.e., data cells) with the things used to search them (i.e., search boxes).” Id. Patent Owner’s arguments are unpersuasive, at least because the Examiner’s rejection does not propose “replacing” Groff’s data cells. In that regard, Patent Owner attacks a straw man. Regarding Marshall and Brown, Patent Owner argues “it is absurd to suggest that a person having ordinary skill in the art would have been motivated to replace the ‘group drop down list box’ of Marshall with the incremental news group searching of Brown.” PO App. Br. 17. Patent Owner asserts “[a] user having ordinary skill in the art at the time of invention would not have been motivated to do exactly what Marshall teaches not to do in order to make the system of Marshall much more inefficient.” Id. Theses Argument are unpersuasive at least because the Examiner’s proposed combination is not based on “replacing” Marshall’s group drop down list box with Brown’s incremental news group searching. Further, Patent Owner’s argument that one would not be motivated to do Appeal 2014-008596 Reexamination Control 95/000,625 Patent 6,738,770 B2 8 what Marshall teaches not to do is unpersuasive because the assertion is not supported by sufficient persuasive argument or evidence that Marshall criticizes, discredits, or discourages the solution claimed. See In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004). That is, Patent Owner’s arguments do not persuade us that there is no motivation based on Marshall teaching away. Accordingly, because we are unpersuaded the Examiner erred in rejecting representative claim 5 as obvious over Groff, Marshall, and Brown, we sustain the rejection. Claim 8 Claim 8 depends from claim 5 and further recites “providing a sorting priority list that defines a sorting order for the sort procedures; and sorting the data sets of the identified data cells in order of the sort procedures in the sorting priority list.” In finding claim 8 obvious over Groff, Marshall, and Brown, the Examiner cited: 1) Groff, Figs. 2, 8, and 18–20, cols. 6–8, and col. 11:3–64; 2) Marshall, col. 8:21–33, col. 9:7–65, col. 11:1–38, and col. 12:40–65; and 3) Brown, pp. 253–254 and chapters 9, 11, and 13. RAN 6 (citing Request: § VIII.D and Appendix D). Patent Owner argues the limitations of claim 8 are not inherent in Groff, that Marshall does not disclose “prioritizing or defining a sort order for columns or other elements - let alone, sort procedures,” and that Brown “does not disclose prioritized sorting.” PO App. Br. 17–19. We are unpersuaded of error. Brown teaches multiple options for accomplishing sorts, including sorts based on subject or sender in a message header, and ordering the sort list in either ascending or descending order. Brown, p. 263. Which sort is Appeal 2014-008596 Reexamination Control 95/000,625 Patent 6,738,770 B2 9 accomplished (i.e., prioritized) is selected from a list a possible sorts. Id. Patent Owner does not present sufficient argument or evidence to persuade us that the Examiner’s proposed construction of claim 8’s “sorting priority list” is unreasonably broad or that it is not met by Brown’s sort menu having multiple sort options. Accordingly, for at least the foregoing reasons, we are unpersuaded of error in the Examiner’s conclusion that the combination of Groff, Marshall, and Brown would have taught or suggested the limitations of claim 8 to one skilled in the art. Claim 25 Claim 25 depends from claim 8 and further recites “wherein the sorting priority list is generated based at least in part upon the order in which the user inputs filter criteria in the filter cells.” In finding claim 25 obvious over Groff, Marshall, and Brown, the Examiner cited: 1) Groff, Figs. 2, 8, and 18–20, cols. 6–8, and 11:3–64; 2) Marshall, 8:1–39 and 9:47–52; and 3) Brown, pp. 253–254 and chapter 13. RAN 6 (citing Request: § VIII.D and Appendix D). Patent Owner argues the limitations of claim 8 are not inherent in Groff, that Marshall does not disclose “prioritizing or defining a sort order for columns or other elements - let alone, sort procedures,” and that the cited portions of Brown “at no point [] disclose the claimed sorting priority list.” PO App. Br. 17–19. We are unpersuaded of error. Marshall discloses a user selection of a record displayed in a list box causes related list boxes to display sorted lists of records related to the selection. Marshall 9:47–52. Brown discloses sorting newsgroup messages either ascending or descending on fields, including author and subject. Appeal 2014-008596 Reexamination Control 95/000,625 Patent 6,738,770 B2 10 Brown, p. 263. Groff discloses building SQL filter commands and complex filter command sequences “by repetitively selecting cells.” Groff 8:23–24; see also cols. 6–8. The Examiner found that “it would have been obvious to combine certain features from any of the identified references for the purpose of creating a more user-friendly interface for searching, sorting, and filtering large data sets.” ACP p. 16 (citing Request p. 58). We are unpersuaded of error at least because Patent Owner argues against the rejection by attacking the references individually, when the rejection is based on what their combine teachings would have taught or suggested to one skilled in the art. See In re Keller, 642 F.2d 413 (CCPA 1981). Against Marshall alone, Patent Owner argues that because “Marshall merely discloses that in response to a single user selection in one list box, related records in another list box are sorted alphabetically,” “there is only a single filter criteria input [] disclosed in Marshall” and “there is no ‘order in which the user inputs filter criteria’ in Marshall.” PO App. Br. 19. Patent Owner also argues “Marshall does not disclose utilizing the order in which a user selects records to generate a ‘sorting priority list.’” Id. These arguments are unpersuasive of error at least because the Examiner’s rejection cites the combined teachings of Marshall, Groff, and Brown in finding claim 25 obvious, and not Marshall alone. See RAN 6 and Request, § VIII.D and Appendix D, p. 22–23. In citing Groff, the Examiner found that “Groff discloses using multiple filter/sort functions, and the ability add [sic] additional filter/sort to a table by combining newly generated SQL SELECT command clauses with predefined SQL SELECT clauses.” Ran 6 (incorporating Request, § VIII.D Appeal 2014-008596 Reexamination Control 95/000,625 Patent 6,738,770 B2 11 and Appendix D, p. 22–23 (citing Groff Figure 2 and Cols. 6-8)). Patent Owner argues that the Examiner’s finding is “false and appears to be based on a misunderstanding of basic SQL syntax.” Patent Owner’s argument is unpersuasive because it amounts to a bald assertion without sufficient persuasive argument or evidence that the Examiner’s statement is, in fact, false and/or based on a misunderstanding of basic SQL syntax. Regarding the Examiner’s citation to Brown (pp. 253–254 and ch. 13), Patent Owner argues the Examiner’s finding amounts to “an improper conclusory statement” and “does not afford Appellant a fair opportunity to respond.” Patent Owner further argues “at no point do pages 253–254 or Chapter 13 of Brown disclose the claimed sorting order.” Id. We find this unpersuasive of error at least because Patent Owner’s substantive argument fails to consider that Groff and Marshall are also cited in rejecting claim 25. See RAN 6 and Request, § VIII.D and Appendix D, p. 22–23. Moreover, we are not persuaded that Patent Owner was not afforded a fair opportunity to respond because, as Requester points out, “at no point did [Patent Owner] address any of the dependent claims before filing its appeal brief.” Req. Resp. Br. 14. Hence, on the record before us, we see no error in the Examiner’s rejection of claim 25. We sustain the rejection. Claim 31 Claim 31 depends from claim 5 and recites in pertinent part “wherein in response to user selection of one of the legal values for one of the filter cells, predetermined search criteria are assigned to other of the filter cells.” Appeal 2014-008596 Reexamination Control 95/000,625 Patent 6,738,770 B2 12 In rejecting claim 31, the Examiner cited: 1) Groff, Abstract, 3:12–43, 4:26–31, and cols. 2–6, 8–9, and 11–12; 2) Marshall, Fig. 5A and col. 8; and 3) Brown, pp. 253–254 and chapter 13. RAN 6 (citing Request: § VIII.D and Appendix D). Patent Owner argues that Groff “does not disclose assigning predetermined search criteria to another cell based on a selection in a cell.” PO App. Br. 20. Patent Owner also argues that Marshall’s list boxes “cannot be interpreted as the filter cells of the claim” and that the Examiner’s cited passages from column 8 of Marshall do not “disclose assigning predetermined search criteria to one of the other list boxes.” Id. Regarding Brown, Patent Owner argues that “it is impossible for Brown to disclose assigning predetermined search criteria to another filter cell in response to a user selection in one of the filter cells” because “Brown fails to even disclose more than on filter cell.” Id. at 20–21. We are not persuaded of error in the Examiner’s rejection of claim 31. Patent Owner again argues against the references individually when the rejection is based on their combined teachings. PO App. Br. 20–21. As discussed above, we find Marshall’s “list boxes 116, 132, and 148” meet the claimed filter cells. Moreover, Marshall discloses that “[i]n updating the list boxes 116, 132 and 148, the list box [i.e., filter cell] receiving the selection highlights the user selection [of a legal value], and the other of the list boxes process the update message they receive. The update message informs [i.e., assigns predetermined criteria to] these other list boxes [i.e., filter cells] that they need to update the information they display.” Marshall col. 8, ll. 58– 63. Patent Owner’s arguments are not supported by sufficient argument or Appeal 2014-008596 Reexamination Control 95/000,625 Patent 6,738,770 B2 13 evidence to persuade us that Marshall’s disclosure would have taught or at least suggested “wherein in response to user selection of one of the legal values for one of the filter cells, predetermined search criteria are assigned to other of the filter cells.” Accordingly, we sustain the rejection of claim 31. Claim 37 Patent Owner argues the rejection of claim 37 over Groff, Marshall, and Brown under a separate heading but bases patentability on arguments presented with respect to claims 5, 8, and 25, rejected over Groff, Marshall, and Brown, as discussed above. PO App. Br. 21. Accordingly, for the reasons discussed above with respect to the rejections of claims 5, 8, and 25, we sustain the Examiner’s rejection of claim 37 over Groff, Marshall, and Brown. Dependent Claims 6, 7, 10, 12, 16, 19, 21, 27, 30, 32–35, 41, 42, 45, and 49 Patent Owner argues the rejection of claims 6, 7, 10, 12, 16, 19, 21, 27, 30, 32–35, 41, 42, 45, and 49 over Groff, Marshall, and Brown under a separate heading but bases patentability on arguments presented with respect to other claims rejected over Groff, Marshall, and Brown as discussed above. PO App. Br. 21. Accordingly, for the reasons discussed above, we sustain the Examiner’s rejection of claims 6, 7, 10, 12, 16, 19, 21, 27, 30, 32–35, 41, 42, 45, and 49 over Groff, Marshall, and Brown. Appeal 2014-008596 Reexamination Control 95/000,625 Patent 6,738,770 B2 14 CONCLUSION Because the Examiner has not erred in rejecting claims 5–8, 10, 12, 16, 19, 21, 25, 27, 30–35, 37, 41, 42, 45, 46, and 49 as obvious under 35 U.S.C. § 103(a) over Groff, Marshall, and Brown, we sustain the Examiner’s rejection. Affirmance of the obviousness rejection over Groff, Marshall and Brown renders it unnecessary to reach the remaining rejections, as all claims subject to reexamination have been addressed and found unpatentable. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching additional obviousness rejections). ORDER The Examiner’s decision to reject claims 5–8, 10, 12, 16, 19, 21, 25, 27, 30–35, 37, 41, 42, 45, 46, and 49 is affirmed. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED Appeal 2014-008596 Reexamination Control 95/000,625 Patent 6,738,770 B2 15 Patent Owner: PROCOPIO, CORY, HARGREAVES & SAVITCH LLP 525 B Street Suite 2200 San Diego, CA 92101 Third Party Requester: Justin S. Cohen THOMPSON & KNIGHT, L.L.P. 1722 Rough Street, Suite 1500 Dallas, TX 75201-2533