Ex Parte Leland et al

Patent Trial and Appeal BoardSep 26, 2012

11318679 (P.T.A.B. Sep. 26, 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. 11/318,679 12/27/2005 Maureen G. Leland LOT920050150US1 (122) 6934 46321 7590 09/26/2012 CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER TRAN, ANHTAI V ART UNIT PAPER NUMBER 2168 MAIL DATE DELIVERY MODE 09/26/2012 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 MAUREEN G. LELAND, BRIAN J. LEVINE, and DAVID TAIEB ____________________ Appeal 2010-003208 Application 11/318,679 Technology Center 2100 ____________________ Before ERIC S. FRAHM, DAVID M. KOHUT, and MICHAEL J. STRAUSS, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003208 Application 11/318,679 2 STATEMENT OF THE CASE1 Introduction Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection of claims 1-14, all the claims pending in the application, which have been twice rejected. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Disclosed Invention Appellants disclose a method of generating a visual view in a collaboration application designer, wherein the visual view can utilize a database query result set (Spec. ¶ [0015]). Exemplary Claims An understanding of the invention can be derived from a reading of exemplary claims 1 and 9, which are reproduced below with emphases added: 1. A collaborative application generation method comprising: creating a form for a collaborative application; placing a data source user interface control within the form; binding at least one field of a database query result set to the data source user interface control; and, storing a database query for the result set separately from the form. 9. A computer program product comprising a computer usable medium having computer usable program code for 1 Throughout our decision, we make reference to the Appeal Brief filed June 8, 2009 (“App. Br.”); the Examiner’s Answer mailed October 28, 2008 (“Ans.”); and the Reply Brief filed December 29, 2008 (“Reply Br.”). Appeal 2010-003208 Application 11/318,679 3 collaborative application generation, the computer program product including: computer usable program code for creating a form for a collaborative application; computer usable program code for placing a data source user interface control within the form; computer usable program code for binding at least one field of a database query result set to the data source user interface control; and, computer usable program code for storing a database query for the result set separately from the form. The Examiner’s Rejections (1) The Examiner rejected claims 9-14 under 35 U.S.C. § 101 as being drawn to ineligible subject matter. Ans. 3-5. (2) The Examiner rejected claims 1-14 under 35 U.S.C. § 102(e) as being anticipated by Nachnani (US 2007/0079282 A1). Ans. 5-10. Appellants’ Contentions (1) Appellants contend (App. Br. 4-6; Reply Br. 2-6) that the Examiner erred in rejecting claims 9-14 under 35 U.S.C. § 101 for numerous reasons, including that the subject matter in the claims sets forth a “Beauregard claim”2 and should be eligible subject matter (Reply Br. 4).3 2 In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995) (remanding the matter back to the Board of Patent Appeals and Interferences because, as a result of the Commissioner’s decision, there was no case or controversy). 3 For the § 101 rejection, Appellants only present arguments on the merits with regard to independent claim 9 (see App. Br. 4-6; Reply Br. 2-6). No arguments are presented for dependent claims. Separate patentability is not argued for dependent claims 10-14 (see App. Br. 4-6; Reply Br. 2-6). We select claim 9 as representative of claims 9-14 for this issue. Appeal 2010-003208 Application 11/318,679 4 (2) Appellants contend (App. Br. 7-9; Reply Br. 6-8) that the Examiner erred in rejecting claims 1-14 under 35 U.S.C. § 102(e) for numerous reasons, including that Nachnani does not disclose or show a database query result set (App. Br. 7-9; Reply Br. 6-8).4 Issues on Appeal (1) Did the Examiner err in rejecting claims 9-14 under 35 U.S.C. § 101 because claim 9 is drawn to eligible subject matter? (2) Did the Examiner err in rejecting claims 1-14 under 35 U.S.C. § 102(e) because Nachnani does not disclose or show a field of a database query result set? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions in the Appeal Brief (App. Br. 4-9) and the Reply Brief (Reply Br. 2-8) that the Examiner has erred. We disagree with the Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to the Appellants’ Appeal Brief (Ans. 11-14). We highlight and amplify certain arguments and findings with 4 For the art rejection, Appellants only present arguments on the merits with regard to independent claim 1 (see App. Br. 9; Reply Br. 6-9). No arguments are presented for dependent claims. Thus, separate patentability is not argued for independent claims 7 and 9, or for dependent claims 2-6 and 10-14 (see App. Br. 7-9; Reply Br. 6-8). We select claim 1 as representative of claims 1-14 for this issue. 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2010-003208 Application 11/318,679 5 regard to Nachnani as follows. (1) Computer useable medium Appellants’ contentions (App. Br. 4-6; Reply Br. 2-6) regarding the § 101 rejection of claim 9-14 are unpersuasive at least because “[t]he Beauregard case itself was not a decision on the merits of patentability.” CyberSource Corp. v. Retail Decisions, Inc., 620 F. Supp. 2d 1068, 1079 (N.D. Cal. 2009) aff'd, 654 F.3d 1366 (Fed. Cir. 2011). Further, claim 9 does not even set forth a tangible computer readable medium having computer programs stored thereon, with the computer programs being further limited in the body of the claim. Instead, claim 9 sets forth, “A computer program product comprising a computer useable medium having computer usable program code . . . the computer program product including . . . [a plurality of programs].” The recited “computer program product” is not limited to storing the programs recited in the body of the claim. Further, the recited “computer program product” is not limited to a tangible and non-transitory computer readable medium that stores programs recited in the body of the claim. Similarly, the recited “computer useable medium” is neither limited to storing the computer programs recited in the body of the claim nor limited to a tangible and non-transitory computer useable medium. The Examiner (Ans. 11-13) finds that the Application’s original disclosure supports that the claimed computer useable medium may be a transitory, propagating signal (see e.g., Spec. ¶ [0025] which discloses “[t]he medium can be . . . electromagnetic, infrared . . . or a propagation medium”). We agree with the Examiner that Claim 9-14 are drawn to ineligible subject Appeal 2010-003208 Application 11/318,679 6 matter because the claimed “computer readable medium” can be a transitory, propagating signal and transitory, propagating signals are ineligible. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). In view of the foregoing, we will sustain the Examiner’s § 101 rejection of claim 9-14. (2) Database query result set Appellants contend that Nachnani’s disclosed database is not a database query result set (App. Br. 9). Appellants also contend that Nachnani’s data elements bound to the formula are not a query result (Reply Br. 8). In general, Appellants contend that Nachnani does not show or disclose a database query result (App. Br. 7-9; Reply Br. 6-9). We agree with the Examiner (Ans. 5-10, 13-14) that Nachnani does show or disclose “binding a field of a database query result set to the data source user interface control,” as recited in claim 1 and as similarly recited in claims 7 and 9. In rejecting representative claim 1, the Examiner relied upon Nachnani’s disclosed Figures (Figs. 1a, 2a, 7e, and 7f) and Specification (Spec. ¶¶ [0020], [0039], [0041], [0067], [0068], and [0090]). Nachnani discloses a Formula Builder user interface that permits a user to define component values in terms of a formula (Spec. ¶ [0090]). That is, the formula may be bound to the interface through a user-defined component. The formula, in turn, may rely upon values from other components that are included in tables (Spec. ¶ [0090]). In other words, the tables are a database, for which the components are included therein. The components are a database query result set when relied upon by a formula. The fields of the component used by the formula are thus each “one field of Appeal 2010-003208 Application 11/318,679 7 a database query result set” (claims 1 and 9). In view of the foregoing, we will sustain the Examiner’s § 102(e) rejection of claims 1-14. CONCLUSIONS (1) The Examiner did not err in rejecting: (a) claims 9-14 as being non-statutory under 35 U.S.C. § 101 because they are drawn to ineligible subject matter; and (b) claims 1-14 as being anticipated under 35 U.S.C. § 102(e) because Nachnani discloses a field of a database query result set, as recited in claim 1, and similarly recited in claims 7 and 9. (2) Claims 1-14 are not patentable. DECISION The Examiner’s rejections of claims 1-14 are 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)(1)(iv)(2010). AFFIRMED ke