Ex Parte Rapp

Patent Trial and Appeal BoardJan 14, 2013

11100515 (P.T.A.B. Jan. 14, 2013)

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. 11/100,515 04/07/2005 Roman A. Rapp 07781.0242-00 2765 22852 7590 01/14/2013 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER PHANTANA ANGKOOL, DAVID ART UNIT PAPER NUMBER 2175 MAIL DATE DELIVERY MODE 01/14/2013 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 ROMAN A. RAPP ________________ Appeal 2010-006147 Application 11/100,515 Technology Center 2100 ________________ Before JOSEPH F. RUGGIERO, JEREMY J. CURCURI, and JENNIFER L. McKEOWN, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL1 Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-23. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1-23 are rejected under 35 U.S.C. § 103(a) as obvious over Liebich (WO 02/101575 A2; published December 19, 2002) and ABC 1 Rather than repeat the Examiner’s positions and Appellant’s arguments in their entirety, we refer to the following documents for their respective details: the Appeal Brief (App. Br.) filed October 26, 2009; the Examiner’s Answer (Ans.) mailed January 21, 2010; and the Reply Brief (Reply Br.) filed March 12, 2010. Appeal 2010-006147 Application 11/100,515 2 (OROS ABCPLUS USER’S GUIDE; published October 31, 1998). Ans. 3- 9. We reverse. STATEMENT OF THE CASE Appellant’s invention relates to graphical user interfaces for entering object assignments. Specification ¶1. Claim 1 is illustrative and reproduced below with the key disputed limitation emphasized: 1. A method for creating an assignment between at least a first object of a first object hierarchy and at least a second object of a second object hierarchy, wherein at least the second object hierarchy includes a plurality of objects that are sub-objects of a root object and at least one folder represented by a folder object that is the root object for the plurality of sub-objects, and wherein a first subset of the plurality of sub-objects can be assigned to the first object, and a second subset of the plurality of sub- objects cannot be assigned to the first object, the method comprising: simultaneously displaying the first object in the first object hierarchy and the folder object in the second object hierarchy; selecting the displayed first object; in response to the selection, displaying an indicator symbol for the folder object, the indicator symbol indicating that at least one of the plurality of sub-objects can be assigned to the first object; and selecting the folder object to automatically create an assignment between the first object and each of the plurality of sub-objects in the first subset without creating an assignment between the first object and any of the plurality of sub-objects in the second subset. PIVOTAL ISSUE Under 35 U.S.C. § 103(a), has the Examiner erred by finding that Liebich and ABC collectively teach “selecting the folder object to automatically create an assignment between the first object and each of the plurality of sub-objects in the first subset without creating an assignment Appeal 2010-006147 Application 11/100,515 3 between the first object and any of the plurality of sub-objects in the second subset” as recited in claim 1? ANALYSIS THE OBVIOUSNESS REJECTION OF CLAIMS 1-23 The Examiner finds that Liebich and ABC collectively teach all recited limitations of claim 1. Ans. 3-5. The Examiner relies on ABC’s assignment paths, which distribute costs between accounts, for teaching the disputed limitation. Ans. 4 (citing ABC, pp. 83-86). The Examiner reasons that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Liebich to incorporate creating assignments as taught by ABC to allow the user to manipulate assignments. Ans. 4. Appellant argues, among other arguments, that ABC discloses assignments between a source account and several destination accounts, but does not disclose how these assignment paths are created, and does not teach or suggest selecting the folder object to automatically create an assignment as recited in claim 1. App. Br. 15 (citing ABC, pp. 83, 85). Appellant argues that, in ABC, clicking on the source account displays assignment paths that are already created. App. Br. 15 (citing ABC, p. 86). In response, in the Answer’s Response to Argument section, the Examiner relies for the first time on Liebich’s graphical assignment of a first object to a second object for teaching the disputed limitation. Ans. 11-12 (citing Liebich, 5:13-26). We do not agree with the Examiner’s position, with regard to claim 1, that Liebich and ABC collectively teach the disputed limitation. The Examiner does not squarely address Appellant’s specific arguments (see Appeal 2010-006147 Application 11/100,515 4 App. Br. 15) concerning ABC’s deficiencies in the Response to Argument section of the Answer (see Ans. 9-14). Regarding the Examiner’s new position (Ans. 11-12) based on Liebich teaching the disputed limitation, in the Reply Brief Appellant argues that Liebich’s object 111 (Figure 5B) is not the root object for a plurality of sub-objects, and Liebich’s object 112 (Figure 5B) is not selected to automatically create an assignment, as recited in claim 1. Reply Br. 2. We agree with Appellant. We are persuaded that the Examiner has erred in rejecting claim 1, and we therefore do not sustain the Examiner’s rejection of claim 1, as well as claims 2-8 which depend from claim 1. Regarding independent claims 9 and 16, Appellant argues claims 9 and 16 together with claim 1. App. Br. 16. Claim 9 recites “selecting the folder object to automatically create an assignment between the first object and each of the plurality of sub-objects in the first subset without creating an assignment between the first object and any of the plurality of sub-objects in the second subset,” and claim 16 recites “in response to a user's selection of the folder object when the indicator symbol is displayed, automatically create an assignment between the first object and each of the plurality of sub-objects in the first subset.” Weighing Appellant’s arguments against the Examiner’s findings, we conclude that Appellant has shown error in the Examiner’s rejection of claims 9 and 16, and we therefore do not sustain the Examiner’s rejection of those claims, as well as claims 10-15 and 17-23 which depend from claims 9 and 16, respectively. 2 3 2 The Examiner’s attention is directed to Evaluating Subject Matter Eligibility Under 35 USC § 101: August 2012 Update, Office of Patent Appeal 2010-006147 Application 11/100,515 5 ORDER The Examiner’s decision rejecting claims 1-23 is reversed. REVERSED gvw Legal Administration, United States Patent and Trademark Office, available at http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf 3 We interpret the recited elements in claim 16 as having invoked the provisions of 35 U.S.C. § 112, sixth paragraph. Appellant identifies corresponding structures in the Specification for the recited means plus function limitations. App. Br. 9-10.