Ex Parte Gottsman

Patent Trial and Appeal BoardSep 27, 2012

09824355 (P.T.A.B. Sep. 27, 2012)

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. 09/824,355 04/02/2001 Edward J. Gottsman 38836.00.0044 7180 30498 7590 09/28/2012 Vedder Price PC 222 NORTH LASALLE STREET CHICAGO, IL 60601 EXAMINER CORRIELUS, JEAN M ART UNIT PAPER NUMBER 2162 MAIL DATE DELIVERY MODE 09/28/2012 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 EDWARD J. GOTTSMAN ____________________ Appeal 2011-002459 Application 09/824,355 Technology Center 2100 ____________________ Before CAROLYN D. THOMAS, CARL W. WHITEHEAD, JR., and JAMES R. HUGHES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals from the Examiner’s rejection of claims 1-11. Claims 12-18 have been withdrawn. (Br. 5.) We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2011-002459 Application 09/824,355 2 Representative Claim 1. In a computer system having a graphical user interface including a display and a user selection device, a method of permitting a user to quickly view elements in a database comprising: (a) displaying in a matrix area on the display a matrix having a plurality of cells and a plurality of icons displayed in one or more of the cells, the matrix including displayed row headings and column headings and each icon corresponding to an element in the database; (b) receiving an icon selection signal in response to a user selecting one of the icons with the user interface selection device; and (c) in response to the icon selection signal, displaying a corresponding element. Rejection on Appeal 1 The Examiner rejects claims 1 and 3-11 under 35 U.S.C. § 102(b) as being anticipated by U.S. Patent No. 5,650,800, issued Jul. 22, 1997 (“Benson”). ISSUE Does the Examiner err in finding that Benson discloses “displaying . . . a matrix having a plurality of cells and a plurality of icons displayed in one or more of the cells, the matrix including displayed row headings and column headings and each icon corresponding to an element in the database” 1 The Examiner withdraws the anticipation rejection of claim 2 and states that claim 2 includes allowable subject matter. (Answer (mailed September 15, 2009) (“Ans.”) at 3-4. Appeal 2011-002459 Application 09/824,355 3 and “in response to the icon selection signal, displaying a corresponding element” as recited in Appellant’s claim 1 and the commensurate limitations of claim 10? ANALYSIS We agree with Appellant that portions of Benson identified by the Examiner do not explicitly disclose the disputed features of claim 1 (Br. 11- 13) or the remaining claims (2-11) (Br. 12-17). Specifically, we agree with Appellant that Benson fails to disclose, as recited in claim 1, “displaying . . . a matrix having . . . a plurality of icons . . . including displayed row headings and column headings and each icon corresponding to an element in the database” (see Br. 12-13) and “in response to the icon selection signal, displaying a corresponding element” (see Br. 14-16 discussing claims 4-7 and the failure of Benson to display elements). Claim 1 requires “displaying . . . a matrix having a plurality of cells and a plurality of icons displayed in one or more of the cells, the matrix including displayed row headings and column headings and each icon corresponding to an element in the database” (claim 1). As explained by Appellant, “the coordinate indicia (i.e., the (A-F) and (1-5) headings) taught by Benson are not displayed on his display 100.” (Br. 13.) Rather, the headings/coordinate indicia shown in Benson’s Fig. 5 are merely provided for reference and are not actually displayed in the display screen (Fig. 3, element 100). As explained by Appellant, comparing “Benson’s FIGs. 3 and 5 illustrates that his coordinate indicia are illustrated outside the boundaries of the display 100.” (Br. 13.) Appeal 2011-002459 Application 09/824,355 4 Claim 1 further requires “receiving an icon selection signal . . . and . . . in response to the icon selection signal, displaying a corresponding element” (claim 1). We do not find any mention in Benson of database elements corresponding to the displayed icons, much less displaying such elements responsive to a signal (icon selection signal). As explained by Appellant, “the cited portion of Benson fails to mention changing a visually perceptible characteristic of anything, much less in response to an ‘icon selection signal.’” (Br. 14 (with respect to claim 3); see also Br. 14-15 (discussing the Benson’s failure to disclose changing a visually perceptive characteristic of icons that correspond to the elements) and 15-16 (discussing claims 5-7, the relationship between the icons and elements, and Benson’s failure to display the elements).) Consequently, we are constrained by the record before us to conclude that Benson fails to disclose the recited features of Appellant’s claim 1, and the rejection of claim 1 fails to establish a prima facie case of anticipation. Appellant’s independent claim 10 includes limitations of commensurate scope, and dependent claims 3-9 and 11 depend on and stand with claims 1 and 10 respectively. Accordingly, we reverse the Examiner’s anticipation rejection of claims 1 and 3-11. CONCLUSION OF LAW Appellant has shown that the Examiner erred in rejecting claims 1 and 3-11 under 35 U.S.C. § 102(b). Appeal 2011-002459 Application 09/824,355 5 DECISION We reverse the Examiner’s rejections of claims 1 and 3-11 under 35 U.S.C. § 102(b). REVERSED tkl