Ex Parte Buck et al

Patent Trial and Appeal BoardFeb 6, 2014

11999912 (P.T.A.B. Feb. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte SCHUYLER BUCK, MORRIS J. YOUNG, JASON BUSH, SCOTT W. LEAHY, and RYAN SCOTT MCKINNEY1 __________ Appeal 2011-008955 Application 11/999,912 Technology Center 2100 __________ Before ERIC GRIMES, LORA M. GREEN, and ULRIKE W. JENKS, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a method of querying a database, which have been rejected for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Party in Interest as Roche Diagnostics Operations, Inc. (App. Br. 1). Appeal 2011-008955 Application 11/999,912 2 STATEMENT OF THE CASE Claims 29-43 are on appeal.2 As Appellants note, “[i]ndependent claims 29 and 36 and their dependent claims, each includ[es] limitations requiring that the placement of a second search criteria at differing distances from a first search criteria along a common direction result[s] in differing Boolean operators being inserted into the query” (App. Br. 5, emphasis omitted). Claim 29 is illustrative and is reproduced in the Claims Appendix of the Appeal Brief. The claims stand rejected under 35 U.S.C. § 103(a) as follows: • Claims 29-32 and 36-39 based on Yurko3 and Goldberg4 (Ans. 4); • Claims 33 and 40 based on Yurko, Goldberg, and Rippich5 (Ans. 10-11); • Claims 34, 35, 41, and 42 based on Yurko, Goldberg, and Bala6 (Ans. 12); and • Claim 43 based on Yurko, Goldberg, Bala, and Goodnow7 (Ans. 14). DISCUSSION The Examiner has rejected all of the claims on appeal as obvious based on Yurko and Goldberg, by themselves or combined with other prior 2 Claims 44-48 are also pending and stand rejected (Ans. 15-22). However, Appellants state that “[c]laims 44-48 are not being appealed” (App. Br. 5). 3 Yurko et al., US 2003/0208465 A1, published Nov. 6, 2003. 4 Goldberg et al., US 2005/0004911 A1, published Jan. 6, 2005. 5 Rippich, US 2002/0099701 A1, published July 25, 2002. 6 Bala et al., US 2003/0018644 A1, published Jan. 23, 2003. 7 Goodnow et al., US 2006/0010098 A1, published Jan. 12, 2006. Appeal 2011-008955 Application 11/999,912 3 art. The Examiner finds that Goldberg discloses displaying different Boolean operators depending on the distance in a first direction between search criteria (Ans. 5-6, citing Goldberg at ¶¶ 40-42). Appellants argue that “Goldberg teaches assigning Boolean operational relationships between filter criteria based on whether such filter icons are placed horizontally or vertically adjacent. . . . This is different and distinct from indicating differing Boolean relationships based on differing separation lengths along a single direction, as claimed.” (App. Br. 6.) We agree with Appellants that the evidence does not support the Examiner’s finding that Goldberg discloses that disputed limitation. Goldberg describes associating filter icons with Boolean AND or OR operators depending on where they are dragged (Goldberg 3, ¶ 40) but in Goldberg the operator is determined by whether the filter icons are placed horizontally (OR) or vertically (AND) (id. at 4, ¶¶ 41, 42). The claims, however, require the Boolean operator to depend on the distance between search criteria “in a first direction.” The Examiner reasons that “Goldberg contemplates any set of relative positioning to determine operators” and that Goldberg’s description of different operators depending on horizontal or vertical placement is simply one embodiment, to which Goldberg’s invention is not limited (Ans. 23). In our view, however, this argument overstates the breadth of Goldberg’s disclosure. The Examiner points to Goldberg’s statement that “various modifications and changes may be made” to the disclosed invention (id.) but has not provided evidence or persuasive reasoning to establish that Goldberg Appeal 2011-008955 Application 11/999,912 4 would have made obvious the specific modification that would result in the method of determining Boolean operators that is recited in the claims. The Examiner also argues that “there are only 3 ways to position items on a two dimensional screen, in a horizontal line, in a vertical line, or in a combination of horizontal and vertical” and therefore “it would have been obvious for a person having ordinary skill in the art to try the limited number of positions to see what works best for users” (Ans. 24). Again, however, the Examiner has not provided any logical reasoning that would have led a person of ordinary skill in the art to base a choice of Boolean operator on the distance separating two criteria in a given direction. The Examiner’s reasoning that a skilled artisan could have modified Goldberg to include the disputed limitation does not give any reason to conclude that a skilled artisan would have considered it obvious to do so. “‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”’ KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). SUMMARY We reverse all of the rejections on appeal. REVERSED cdc