Ex Parte Kolman et al

Patent Trial and Appeal Board

Sep 25, 2012

10782985 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT S. KOLMAN, REID HAYHOW,
and DAVEN WALT SEPTON
____________

Appeal 2010-005177
Application 10/782,985
Technology Center 2100
____________

Before DENISE M. POTHIER, JEFFREY S. SMITH, and BRIAN J.
MCNAMARA, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005177
Application 10/782,985

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 2-10 and 12-21, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Representative Claim
20. A system having a display, a user interface, and a computer
readable medium, the computer readable medium comprising:

computer code for displaying a high-level map structure
panel on said display; said high level map display including a
test flow map structure, which relates to a flow of tests for
testing at least one device, on a first image scale;

computer code for displaying a panning window on said
display, said panning window being movable from a first
position in the high-level map structure panel to a second
position in the high-level map structure panel by way of a
continuous panning motion from the first position to the second
position to select a sub-portion of said displayed map structure;
and

computer code for displaying a detailed sub-structure
panel on said display; said detailed sub-structure displaying
said selected sub-portion of said map structure on a second
image scale greater than said first image scale.

Prior Art
Brandau US 6,111,561 Aug. 29, 2000
Chong US 2003/0142117 A1 Jul. 31, 2003
Wood US 2004/0006425 A1 Jan. 8, 2004
Organ US 7,047,463 B1 May 16, 2006
(filed Aug. 15, 2003)
Appeal 2010-005177
Application 10/782,985

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Examiner’s Rejections
Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brandau and Organ.
Claims 3-10 and 12-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brandau, Organ, and Wood.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brandau, Organ, Wood, and Chong.

ANALYSIS
Section 103 rejection of claim 20
Appellants contend that Organ does not teach displaying the test flow
diagram shown in Figure 5A. Br. 11-12. Appellants conclude that the
combination of Brandau and Organ does not teach “computer code for
displaying a high-level map structure panel on said display; said high level
map display including a test flow map structure, which relates to a flow of
tests for testing at least one device, on a first image scale” as recited in claim
20. Br. 12-13. Appellants also conclude that the combination of Brandau
and Organ does not teach code for “displaying a panning window on said
display, said panning window being movable from a first position in the
high-level map structure panel [which includes a test flow map structure] to
a second position in the high-level map structure panel [which includes a test
flow map structure] by way of a continuous panning motion” as recited in
claim 20. Br. 13.
The “test flow map structure, which relates to a flow of tests” recited
in claim 20 does not affect any steps or structural limitations recited in the
system of claim 20. The test flow map structure is a non-functional
Appeal 2010-005177
Application 10/782,985

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description of the graphical element that does not distinguish the claim from
the prior art in terms of patentability. See In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).
That is, the content of nonfunctional descriptive material (i.e., relating to a
flow of tests) is not entitled to weight in the patentability analysis. See Ex
parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential).
The broadest, reasonable scope of claim 20 therefore encompasses
“computer code for displaying a high-level map structure panel on a display;
said high level map display including a structure having [data], on a first
image scale” and “displaying a panning window on said display, said
panning window being movable from a first position in the high-level map
structure panel [which includes data] to a second position in the high-level
map structure panel [which includes data] by way of continuous panning
motion . . . .” The Examiner finds that Brandau teaches the limitations
entitled to weight in the patentability analysis. Ans. 3-4. Appellants have
not provided persuasive evidence or argument to rebut the Examiner’s
finding, choosing to focus their arguments on Brandau’s and Organ’s
purported failure to teach the non-functional descriptive material of
displaying test flows. See Br. 12-13.
We sustain the rejection of claim 20 under 35 U.S.C. § 103.

Section 103 rejection of claim 21
Appellants present arguments for the patentability of claim 21 similar
to those presented for claim 20, which we find unpersuasive. We sustain the
rejection of claim 21 under 35 U.S.C. § 103.

Appeal 2010-005177
Application 10/782,985

5
Section 103 rejection of claims 3-10 and 12-19
Appellants have not presented arguments for separate patentability of
claims 3-10 and 19, which depend from claim 20. Appellants have also not
presented arguments for separate patentability of claims 12-18, which
depend from claim 21. Claims 3-10 and 12-19 thus fall with claims 20 and
21.

Section 103 rejection of claim 2
Appellants have not presented arguments for separate patentability of
claim 2, which falls with claim 20.

DECISION
The rejection of claims 20 and 21 under 35 U.S.C. § 103(a) as being
unpatentable over Brandau and Organ is affirmed.
The rejection of claims 3-10 and 12-19 under 35 U.S.C. § 103(a) as
being unpatentable over Brandau, Organ, and Wood is affirmed.
The rejection of claim 2 under 35 U.S.C. § 103(a) as being
unpatentable over Brandau, Organ, Wood, and Chong is affirmed.
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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