Ex Parte Carignan et al

Patent Trial and Appeal Board

Jan 24, 2014

11238978 (P.T.A.B. Jan. 24, 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.
11/238,978 09/30/2005 Joelle Carignan 09334.0045-00 1535
60668 7590 01/24/2014
SAP / FINNEGAN, HENDERSON LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
SONG, DAEHO D
ART UNIT PAPER NUMBER
2141
MAIL DATE DELIVERY MODE
01/24/2014 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
__________

Ex parte JOELLE CARIGNAN, MANIK SINGH,
and BENJAMIN TORNSKY
__________

Appeal 2011-004572
Application 11/238,978
Technology Center 2100
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
computer screen for displaying a quick-view user interface having a window
on the computer screen of a first user. The Examiner rejected the claims as
anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Appellants identify the Real Party in Interest as SAP AG (see App. Br. 3).
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Statement of the Case
Background
“The present user interface, however, presents, selected information to
the user. Accordingly, a user interface consistent with the principles of the
present invention provides information to the user based on the user’s role
within an organization” (Spec. 6-7 ¶ 042).
The Claims
Claims 1-20 are on appeal. Claim 1 is representative and reads as
follows:
1. A computer screen for displaying a quick-view user
interface having a window on the computer screen of a first
user, comprising:
a pane within the window for displaying, based on a
role of the first user, a subset of data drawn from a set of
data, wherein the subset of data is imported into the user
interface from an external file format and the pane
automatically appears within the window to display the
subset of data when the subset of data is determined to be
relevant to a task the first user is presented with;
a first menu item within the window for allowing the
first user to customize layout of the set of data;
a second menu item within the window for allowing
the first user to modify value of the subset of data by
performing calculation on the subset of data; and
a third menu item within the window configured to
send the customized layout and the modified subset of data
via email for view by a second user, wherein the quick-view
user interface is in data communication with an email server.

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The Issue
The Examiner rejected claims 1-20 under 35 U.S.C. § 102(e) as
anticipated by Setya2 (Ans. 3-8).
The Examiner finds that Setya teaches
a pane displaying data for a sub task in Fig. 22, which
corresponds to a subset of data of task data, within the
window based on roles played by respective employees,
such as analysts, designers, system engineers or the like as
stated in [0110], where the sub task data is imported into the
user interface from an external file format, such as
“Executive Report” of Fig. 46, presenting automatically the
sub task data within the window being relevant to user’s
task, such as Sub Task #4 being relevant to Task #2 in a
hierarchical data structure of Fig. 22); . . .
customizing layout of the task data by means of
creating a new task utilizing a template with a first menu
item, such as “Task” or “Sub Task” from Registration menu
504 of Fig. 7); . . .
modifying or editing the sub task data contained in the
selected project by means of automatically performing
calculation by the Project Manager on the basis of
user’s input data with a second menu item, such as “Task
Status” menu item of Fig. 43 or “Task Report” menu item of
Fig. 47); and . . .
sending the template or customized layout and the
modified sub-task data of the template as attachments via
email server for reviewing by means of controlling the
exchange of email communications with Review Manager,
which corresponds to a third menu item).

(Ans. 4-5).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Setya anticipates claim 1?

2 Setya, H., US 2006/0111953 A1, published May 25, 2006
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Findings of Fact
1. Setya teaches that:
The project imager (PM) 14 has the functions of preparing
projects in which various types of business processes are
combined, and registering this project data in the data base
2. The respective sets of project data include detailed
information indicating which business programs are
included in the projects, what kinds of tasks are assigned to
the sections or employees involved in the business
processes, and what roles are played by respective
employees (for example, analysts, designers, system
engineers or the like) in the respective tasks.

(Setya 6 ¶ 0110).
2. Figure 43 of Setya is reproduced below:

“FIG. 43 is a diagram which shows an example of the GUI window
provided by the project manager” (Setya 4 ¶ 0069).

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3. Figure 47 of Setya is reproduced below:

“FIG. 47 is a diagram which shows an example of the GUI window
provided by the project manager” (Setya 4 ¶ 0073).
4. Figure 48 of Setya is reproduced below:

“FIG. 48 is a diagram which shows an example of the GUI window
provided by the project manager” (Setya 4 ¶ 0074).
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5. Setya teaches that:
In FIG. 47, when the user selects a desired project from the
project table 607 and presses the OK for reporting button
665, the PM 14 displays a GUI such as that shown in FIGS.
48 and 49 in the main window 601 (FIGS. 48 and 49 show
the display obtained when the same GUI is scrolled in the
left-right direction). A task reporting table 666 which
expresses the state of progress and various attributes of all of
the tasks and sub-tasks contained in the selected project is
displayed in this GUI.

(Setya 22 ¶ 0232).
6. Setya teaches that
For example, for a selected task or
sub-task, the PM 14 can calculate the mean value of the
degrees of completion of all of the document files attached
as deliverables in the task status table 117 shown for
example in FIG. 43, and can take this mean value as the
status of the selected task or sub-task.

(Setya 23 ¶ 0235).
Principles of Law
“A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.”
Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir.
2005).
Analysis
Appellants contend that “Setya does not teach or suggest ‘a second
menu item within the window for allowing the first user to modify value of
the subset of data by performing calculation on the subset of data,’ as recited
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by Appellants claim 1” (App. Br. 14)3. Appellants contend that “Setya at
most discloses allowing a user to enter information about a subtask in a GUI,
thereby modifying the subtask data. However, entering a planned start time
and duration of a subtask does not suggest ‘modify[ing] value of the subset
of data by performing calculation on the subset of data,’ as recited in
claim 1” (App. Br. 17).
The Examiner responds that “Setya expressly teaches that the PM
also calculates the cost of each task or sub-task in the Task Report
menu item 666 of Fig 49 on the basis of the actual start time and end time of
the task or sub-task, which is the subset of data from user's input 115 of Fig.
42 (see Figs. 42, 49 and [0235])” (Ans. 11).
We find that Appellants have the better position. We have reviewed
the cited portions of Setya, but find no teaching where Setya allows a user to
modify a value “by performing a calculation on the subset of data” as
required by claim 1. We agree with the Examiner that Setya, in paragraph
[0235] teaches that the project manager 14 calculates values, but the project
manager 14 is a computer program, not a user. Similarly, in paragraph
[0236] of Setya, it is the program manager 14 which stores information in
the form of a tabular calculation program file, not a user.
In an anticipation rejection, every element must be expressly disclosed
in a single reference. We are, therefore, constrained to reverse this
anticipation rejection since Setya does not teach allowing a user to perform
a “calculation on the subset of data” as required by claim 1. See Karsten
Manufacturing Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.

3 We follow the numbering of the Appeal Brief as recited in the Table of
Contents of the Appeal Brief (App. Br. 2).
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2001) (“Invalidity on the ground of ‘anticipation’ requires lack of novelty of
the invention as claimed … that is, all of the elements and limitations of the
claim must be shown in a single prior reference, arranged as in the claim.”).
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Setya anticipates claim 1.
SUMMARY
In summary, we reverse the rejection of claims 1-20 under 35 U.S.C.
§ 102(e) as anticipated by Setya.

REVERSED

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