Ex Parte Nishikawa et al

Patent Trial and Appeal BoardSep 21, 2012

10806832 (P.T.A.B. Sep. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/806,832 03/23/2004 Yuko Nishikawa 7114-81205-US 4230 37123 7590 09/24/2012 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 EXAMINER TAYLOR, JOSHUA D ART UNIT PAPER NUMBER 2426 MAIL DATE DELIVERY MODE 09/24/2012 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 YUKO NISHIKAWA, KAYAN GOLDEN, MICHAEL A. BERGERON, HIMGAN WIBISONO, and PHILIP McKAY ____________ Appeal 2010-006452 Application 10/806,832 Technology Center 2400 ____________ Before STEPHEN C. SIU, THOMAS L. GIANNETTI, and BRIAN J. McNAMARA, Administrative Patent Judges. SIU, Administrative Patent Judge DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2010-006452 Application 10/806,832 2 STATEMENT OF THE CASE The disclosed invention relates generally to sending mail from a restricted communications network (Spec. 1). Claim 1 is representative and reads as follows: 1. A method comprising: - providing access to characterizing descriptors as individually correspond to a plurality of discrete selectable items of data; - providing at least a first and a second characterizing descriptor filter; - simultaneously displaying: a first plurality of user-selectable characterizing descriptor filter criteria as corresponds to the first characterizing descriptor filter, the first plurality of user-selectable characterizing descriptor filter criteria displayed as a horizontal row of user-selectable characterizing descriptor filter criteria; a second plurality of user-selectable characterizing descriptor filter criteria as corresponds to the second characterizing descriptor filter, the second plurality of user-selectable characterizing descriptor filter criteria displayed as a horizontal row of user-selectable characterizing descriptor filter criteria; at least a portion of the characterizing descriptors as corresponds to a present setting of the first and second plurality of user-selectable characterizing descriptor filter criteria, the portion of the characterizing descriptors as corresponds to a present setting of the first and second plurality of user-selectable characterizing descriptor filter criteria displayed as a horizontal row of characterizing descriptors positioned between the first plurality of user-selectable characterizing descriptor filter criteria and the second plurality of user-selectable characterizing descriptor filter criteria. Appeal 2010-006452 Application 10/806,832 3 Claims 1-4 and 6-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ellis (U.S. Patent No. 7,065,709 B2; June 20, 2006), Robertson (US Patent No. 7,149,983 B1; December 12, 2006), and Billmaier (U.S. Patent No. 7,159,177 B2; January 2, 2007). Claims 5, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ellis, Robertson, Billmaier, and Robarts (U.S. Patent Publication No. 2005/0278741A1; December 15, 2005). Issue Did the Examiner err in rejecting claims 1-17? Principles of Law The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, and (3) the level of skill in the art. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Analysis With respect to claims 1, 10, and 12, Appellants argue that while Robertson discloses “simultaneously display[ing] user-selectable Appeal 2010-006452 Application 10/806,832 4 characterizing descriptor criteria and characterizing descriptors corresponding to a present setting of the first and second characterizing filter criteria” (App. Br. 11), Robertson, according to Appellants, fails to disclose or suggest that the first and second plurality of user-selectable characterizing descriptor filter criteria are each displayed “as a horizontal row” and that the corresponding characterizing descriptors are “‘positioned between the first . . . and the second plurality of . . . characterizing descriptor filter criteria’” (Id. at 11). As the Examiner points out, Ellis discloses “descriptor criteria” displayed in a vertical column (see, e.g., Fig. 9a) and that displayed elements “may be displayed using any suitable list, table, grid, or other suitable display arrangement” (col. 11, ll. 4-6). In other words, while Ellis explicitly discloses an example of displaying “descriptor criteria” in a vertical column, Ellis also suggests that one of ordinary skill in the art would have understood that elements may be displayed in a variety of arrangements and formats. We also agree with the Examiner that Ellis discloses horizontal arrows on menu items (see, e.g., Fig. 9a) suggesting the horizontal scrolling or display of display elements. The Examiner also indicates that Robertson discloses displaying multiple menus of “descriptor filter criteria” with corresponding “characterizing descriptors (see, e.g., Fig. 38, elements 706/712 and 724, respectively). Robertson, like Ellis, also discloses that elements may be displayed in a variety of formats and orientations (e.g., col. 9, ll. 55-58 – Appeal 2010-006452 Application 10/806,832 5 “the results from a query can be displayed integrated with the search terms, interleaved with the headings and sub-headings”; col. 22, ll. 9-12 – “A results pane thus can be reconfigured to present results in a format designed to correspond to the type of information (or command) being sought by the user; or col. 24, ll. 22-23 – “various relationships between results for a current filter can be presented in a variety of ways”). Hence, Robertson discloses an explicit example of displaying at least two lists of “descriptor filter criteria” and corresponding “characterizing descriptors,” the “descriptor filter criteria” lists being in a vertical format, but that the display of elements can be “reconfigured” to other formats as needed. Based on Ellis and Robertson, we agree with the Examiner that it would have been obvious to one of ordinary skill in the art to have displayed “descriptor filter criteria” with corresponding results, as disclosed by both Ellis and Robertson, and to have displayed the filter criteria and results in a any of a number of formats, as suggested by both Ellis and Robertson at least because Ellis and Robertson appear to provide this explicit disclosure. The Examiner also indicates that Billmaier discloses that elements “may be displayed horizontally” (col. 11, ll. 40-41) and “simultaneously” (col. 11, ll. 33-34). Billmaier further provides an example of displaying elements in horizontal rows (see, e.g., Figs. 9 and 10). We agree with the Examiner that the combination of the display of multiple descriptor filter criteria and corresponding characterizing descriptors either vertically or in any number of formats known to one of ordinary skill in the art (as Appeal 2010-006452 Application 10/806,832 6 disclosed, for example, by Ellis and/or Robertson) and to have further displayed the elements in horizontal rows (e.g., Billmaier discloses that a known format for display of elements is in a horizontal orientation – see, e.g., Figs. 9 and 10) would have been obvious. Such a combination would have entailed no more than the mere combination of known elements, performing their known functions (i.e., the known practice of displaying known elements in a variety of formats (Ellis and Robertson) with the disclosure that one known orientation to display elements is in a horizontal format (Billmaier)) to achieve the predictable result of displaying elements. Appellants argue that “Billmaier does not disclose [displaying elements] in the same ‘horizontal row’” (App. Br. 12). We disagree with Appellants, given the explicit disclosure of Billmaier of displaying elements “horizontally” (col. 11, ll. 40-41). Appellants also argue that “there is no correlation between information in the quadrants of Billmaier because the quadrants are ‘used for various purposes’” (App. Br. 12). We disagree with Appellants. Appellants do not adequately explain how information that is “used for various purposes” indicates that “there is no correlation between” the information. In any event, even assuming Appellants’ contention to be correct that information used for various purposes bears no correlation with itself, Appellants do not sufficiently demonstrate that both Ellis and Robertson fail to disclose or suggest information that correlates with itself (or other information). As described above and pointed out by the Examiner, Appeal 2010-006452 Application 10/806,832 7 Robertson, for example, discloses characterizing descriptor filter criteria and corresponding results, the results “corresponding” (or “correlating”) with the filter criteria since the displayed results are obtained based on the criteria. Appellants also argue that Billmaier discloses display elements that “are not ‘user-selectable’” (App. Br. 13). Even assuming Appellants’ assertion to be correct, Appellants have not adequately demonstrated that the display elements in Robertson and Ellis are not “user-selectable.” As described above, and as indicated by the Examiner, the display elements in both Robertson and Ellis are selected by a user and are therefore “user- selectable.” Appellants do not provide additional arguments in support of claims 2-9, 11, 13-17. Conclusion of Law The Examiner did not err in rejecting claims 1-17 under 35 U.S.C. § 103(a). SUMMARY We affirm the Examiner’s rejection of claims 1-17. 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. § 1.136(a)(1)(iv). AFFIRMED rvb