Ex Parte Hyland et alDownload PDFPatent Trial and Appeal BoardMay 20, 201310720404 (P.T.A.B. May. 20, 2013) Copy Citation 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 2 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 Claims 1-7 have been withdrawn from consideration.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 Appeal 2013-003237 Application 10/720,404 3 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. Appeal 2013-003237 Application 10/720,404 4 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. Appeal 2013-003237 Application 10/720,404 5 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. Appeal 2013-003237 Application 10/720,404 6 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 llw Copy with citationCopy as parenthetical citation