Ex Parte Hyland et al

Patent Trial and Appeal Board

May 20, 2013

10720404 (P.T.A.B. May. 20, 2013)

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.
10/720,404 11/24/2003 Christopher Hyland LOT920030068US1 (022) 4110
46321 7590 05/20/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
HILLERY, NATHAN
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
05/20/2013 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 CHRISTOPHER HYLAND AND FERNANDO SALAZAR
____________

Appeal 2013-003237
Application 10/720,404
Technology Center 3700
____________

Before JOSEPH L. DIXON, CARLA M. KRIVAK, and
THU A. DANG, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2013-003237
Application 10/720,404

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STATEMENT OF THE CASE
The Patent Examiner rejected claims 8-21. Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 1-7 have been withdrawn from consideration. A prior
Decision on Appeal was mailed by the Patent Trial and Appeal Board
("Board") on January 20, 2011 ("Decision"), where we affirmed the rejection
of claims 8-21. The Appellants filed a Request for Rehearing under 37
C.F.R. § 41.52 in response to the Decision on March 21, 2011. We denied
the Request for Rehearing in our Decision on Request for Rehearing mailed
May 5, 2011.
We affirm.
INVENTION
The invention at issue on appeal relates to "the field of report
generation, and more particularly to the customized use of a reporting tool."
(Spec. ¶[0001]).

ILLUSTRATIVE CLAIM
Claim 8, which further illustrates the invention, follows.
8. A method for generating a user customized report
comprising the steps of:

retrieving a specified template for producing a desired
report;

determining from said specified template a set of
parameters required to produce said desired report;

for each parameter in said set, selecting a screen for
providing a user interface through which a value can be
established for said parameter, and embedding business rule
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Application 10/720,404

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enforcement logic in said selected screen, the business rule
enforcement logic enforcing business rules for accessing data in a
database the business rules restricting a query to a subset of the
data in the database by the screen limiting a specification of the
value for said parameter so as to enforce the business rules; and,

saving each of said selected screens in a report definition
configured to produce a report while executing said embedded
business rule enforcement logic to enforce the business rules in
respect to values established for corresponding ones of the
parameters in the set.

REJECTION AND REFERENCES
Claims 8-21 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Alston (US 2002/0165936 A1) and Helgeson (US
2002/0049749 A1). (Ans. 3; Final Rej. 2-10).

ANALYSIS
The Appellants argue that independent claims 8 and 15 are directed to
the "notion that the screen itself limits a specification of a value for a
parameter so as to enforce a business rule that restricts a query to a subset of
data in a database." (App. Br. 4; Reply Br. 2). We disagree with Appellants'
paraphrasing of the express claim language.
We note that the Examiner appears to have identified "res judicata"
since a portion of Appellants' argument is directed to a prior claimed
element "screen" which was before the Board in the prior appeal. However,
since the amended claim language refers back to the prior claim language,
we find no problematic "res judicata" issue beyond our express findings
below with respect to our prior decision.
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Application 10/720,404

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The Examiner further addresses Appellants' arguments to the screens
in the responsive arguments and addresses of the explicit method steps of
"retrieving…"; "determining…"; "selecting…"; "embedding…"; and "saving
…." (Ans. 4-5).
In response to the Examiner's responsive arguments, Appellants
maintain:
A review of Examiner's rhetoric will reveal three new arguments.
First, Examiner argues that since the business development kit
(BDK) of Helgeson does not state that the screen is not present,
nothing precludes the screen from being present. Second,
Examiner argues that the BDK [Business Development Kit] of
Helgeson includes UI [User Interface] components such as JSP
pages. Third, Examiner argues that Appellants' limitation of
business rules for accessing data in a database is a statement of
intended use and not eligible for patentable weight.

Examiner is wrong on two accounts and the third account
has no bearing on the topic at hand. First, with respect to the
latter account, it is not of consequence whether or not the BDK of
Helgeson includes UI components such as JSP [Java Server Page]
pages. The critical limitation at hand is the screen itself limiting a
specification of a value for a parameter so as to enforce a business
rule that restricts a query to a subset of data in a database. The
critical limitation is not just a screen.

(Reply Br. 5).
The Examiner maintains that the BDK of the Helgeson reference
includes UI components such as JSP pages. (Ans. 4). The Examiner also
maintains that Appellants' preferred embodiment uses the same type of JSP
pages for UI presentation and therefore contains similar functionality as
recited in independent claim 8 with respect to the claimed "screens" and the
business rules embedded therein. (Id.). We agree with the Examiner's line
of reasoning.
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With respect to Appellants' arguments regarding the Examiner's
finding that the business rules for accessing data in a database as a statement
of intended use and not eligible for patentable weight (Reply Br. 5-9), we
agree with Appellants that the business rules are not a statement of "intended
use." However, we do agree with the Examiner that the business rules do
not recite an express and active step in the recited method of independent
claim 8 to distinguish the claimed method. Furthermore, as we set forth in
our prior decision, "we agree with the Examiner that Helgeson does teach
enforcement of business rules." (Decision, 6). We further find that the
language of independent claim 8 with respect to the "business rules" does
not positively recite any further functional steps being recited for the
claimed "method for generating a user customized report."
Therefore, we find Appellants' argument with respect to the content of
the rules (or non-functional descriptive material) does not show error in the
Examiner's conclusion of obviousness of representative independent claim 8
based upon the combination of Alston and Helgeson. Since Appellants have
not set forth separate arguments for patentability of independent claim 15
and dependent claims 9-14, 16-21, we group those claims as falling with
representative claim 8.

CONCLUSION
For the aforementioned reasons, the Appellants have not shown that
the Examiner erred in rejecting claims 8-21 based upon obviousness.

ORDER
We affirm the obviousness rejection of claims 8-21.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED

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