Ex Parte Cox et al

Patent Trial and Appeal Board

Mar 25, 2013

11460461 (P.T.A.B. Mar. 25, 2013)

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.
11/460,461 07/27/2006 Aaron Roger Cox SJO920060010US1 2031
54858 7590 03/25/2013
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
17330 PRESTON ROAD
SUITE 100B
DALLAS, TX 75252
EXAMINER
HOCKER, JOHN P
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
03/25/2013 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 AARON ROGER COX,
BRANDON JOSEPH HERDRICK,
RALPH THOMAS JACKSON, DANIEL LOEWUS-DEITCH,
MARK E. MOLANDER, TERESA SHEN SWINGLER, and
RONALD EARL VAN BUSKIRK II
____________________

Appeal 2010-008710
Application 11/460,461
Technology Center 2100
____________________

Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and JOHN G. NEW,
Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
15-18, 20-22, and 24-36. Claims 1 - 14, 19 and 23 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

According to Appellants, the claims are directed to an application
console that queries an updatable term service for updates to terms. The
application then displays a current term, a legacy term, or a customized term
according to user preferences. The application may also display a term
indicator to notify the user that the term has an associated legacy term or
current term. The user may also provide customized terms and descriptive
text for updatable terms. Abstract.
Claim 15, reproduced below, is illustrative of the claimed subject
matter:
15. A method, in a data processing system, for console-
integrated updatable terms, the method comprising:
creating an instance of a user interface component to be
displayed in an application console, wherein the instance of the
user interface component comprises text to be displayed in the
application console;
identifying an updatable term from a set of updatable
terms within the text;
responsive to identifying an updatable term, looking up
the updatable term in a term data structure, wherein the term
data structure associates for the updatable term a legacy level of
the updatable term and a current level of the updatable term;
selecting a surface level for the updatable term based on
user preferences, wherein the user preferences define the
surface level as legacy, current, or customized;
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replacing the updatable term in the instance of the user
interface component with the surface level of the updatable
term and a term indicator in association with the updatable term
to form a modified instance of the user interface component,
wherein the term indicator indicates a hidden level for the
updatable term; and
displaying the modified instance of the user interface
component in the application console.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Green US 2005/0289168 A1 Dec. 29, 2005

REJECTIONS
The Examiner rejected claims 15 – 18, 20 - 22, and 24 - 36 under 35
U.S.C. § 102(e) as being anticipated by Green; and alternatively, under 35
U.S.C. § 103(a) as being unpatentable over Green and the common sense of
one of ordinary skill in the art of “database searching.” Ans. 7-8.

APPELLANTS’ CONTENTIONS
With respect to the rejection of claims 15-18 and 20-22 under 35 U.S.C.
§ 102(e):
1. “Green does not teach looking up an updatable term in a term data
structure that associates for the updatable term a legacy level of the
updatable term and a current level of the updatable.” App. Br. 11.
2. “Green does not teach or suggest selecting a surface level for the
updatable term based on user preferences, wherein the preferences define the
surface level as legacy, current, or customized.” App. Br. 12.
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3. “[T]he Office Action does not proffer any analysis or technical
reasoning as to why the domain/sub-domain hierarchy of Green is somehow
equivalent to an updatable term as recited in claim 15.” App. Br. 13.
4. “Green does not teach that a term data structure associates a legacy
level of an updatable term with a current level of an updatable term.” Id.
5. [T]he Final Office Action . . . does not proffer any technical
reasoning as to why the contextual search of Green is somehow equivalent
to the term data structure of claim 15.” App. Br. 14.
6. While Green “uses many user interface components . . . [t]he Final
Office Action simply fails to show one given user interface component that
is modified between the creation of the user interface component instance
and the presentation of the user interface component instance to replace a
user updatable term with its surface level as identified based user
preferences.” Id.
7. “[T]he Office Action proffers no analysis as to why mapping a term
to a parse tree structure is somehow equivalent to creating a modified user
interface component having a surface level of a term and a term indicator
that indicates a hidden level of the updatable term.” App. Br. 15.

Additionally with respect to the rejection of claim 18 under 35 U.S.C.
§ 102(e):
8. “Green does not teach displaying a description text associated with
the updatable term responsive to user activation of the term indicator.” App.
Br. 17.

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Additionally with respect to the rejection of claim 20 under 35 U.S.C.
§ 102(e):
9. “[T]he Final Office Action proffers no analysis or technical
reasoning as to why any of [Green’s disclosure at para. [0402]-[0404]] is
equivalent to requesting updates for the set of updatable terms from an
updatable term service and responsive to receiving an update for an
updatable term from the updatable term service, applying the update to the
term data structure.” App. Br. 18.

With respect to the rejection of claims 16, 17, 21, 22, and 24-36:
10. “The Final Office Action does not address [the indicated claims];
therefore, the Final Office Action does not establish a prima facie case of
anticipation for [those] claims.” App. Br. 16, 19.

With respect to the rejection of claims 35 U.S.C. § 103(a):
11. “[C]laims 15-18, 20-22, and 24-36 are improperly rejected under
35 U.S.C. § 103 and that the Final Office Action does not establish a prima
facie case of obviousness for claims 15-18, 20-22, and 24-36.” App. Br. 21.

ISSUE ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 7-21)
the issue presented on appeal is whether Green discloses the disputed claim
limitations.

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We consider Appellants’ arguments
seriatim as they are presented in the principal Brief pages 7-19.
We disagree with Appellants’ contentions as to all rejections. 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 Appellants’ Appeal
Brief. We concur with the conclusions reached by the Examiner. We
highlight the following arguments for emphasis.
In connection with contention 1, Appellants argue “Green does not
teach looking up an updatable term in a term data structure that associates
for the updatable term a legacy level of the updatable term and a current
level of the updatable term.” App. Br. 11. According to Appellants, “the
Examiner does not proffer any technical reasoning as to why a class/sub-
class structure is equivalent to a term data structure that associates for the
updatable term a legacy level of the updatable term and a current level of the
updatable term.” App. Br. 12. The Examiner responds “the claimed lookup
tool's ‘legacy level’ and ‘current level’ simply correspond to looking up
legacy terms and/or current terms” and “Green clearly suggests use of a
‘legacy level’ ([0015] ‘legacy database’) . . . [and] a ‘current level’ ([0519] a
‘current knowledge base’).” Ans. 18. We agree with the Examiner.
Furthermore, although Appellants allege that Green fails to teach or
suggest the disputed limitations, they do not show any particular error in the
Examiner’s findings reproduced above. See In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) (“it has long been the Board's practice to require an
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applicant to identify the alleged error in the examiner's rejections”); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and naked assertion that the
corresponding elements were not found in the prior art). As set forth in 35
U.S.C. § 132(a), the Examiner's burden is to state the “reasons for such
rejection ... together with such information and references as may be useful
in judging of the propriety of continuing the prosecution of his application.”
The Examiner in this case has clearly identified the reference relied upon
(Green) and has explained, in detail, those features of Green relied upon to
satisfy the relevant claim limitations. Ans. 18. At this point, it is Appellants’
burden to identify the error in the Examiner's rejection. See In re Dillon, 919
F.2d 688, 692 (Fed. Cir. 1990) (if a prima facie case of obviousness is
established, the burden shifts to the applicant to come forward with
arguments and/or evidence to rebut the prima facie case); Jung, 637 F.3d at
1365; Lovin, 652 F.3d at 1357. That is, Appellants need to show compare
and contrast with the disputed claim limitations the textual portions upon
which the Examiner relies in the rejection to show errors therein. Beside
Appellants’ mere allegations, we find no such detail analysis of the cited
portions of Green upon which the Examiner relies.
For the reasons supra and on this record, having presented us with
insufficient evidence or argument that the Examiner’s findings are incorrect
or unreasonable, contention 1 is not persuasive of Examiner error.
In connection with contention 2, Appellants argue that “Green does
not teach or suggest selecting a surface level for the updatable term based on
user preferences, wherein the preferences define the surface level as legacy,
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current, or customized.” App. Br. 12. In similar fashion to contention 1,
Appellants argue “the Final Office Action does not proffer any analysis or
technical reasoning as to why the teachings of Green are somehow
equivalent to a term structure that associates for an updatable term a legacy
level of the updatable term and a current level of the updatable term.” Id.
This argument is similar to contention 1 and the Examiner responds
accordingly. Ans. 18-19. We again agree with the Examiner. Furthermore,
while Appellants allege that Green fails to teach or suggest the disputed
limitations, they again fail to specify error in the Examiner’s analysis. On
this record, having presented us with insufficient evidence or argument that
the Examiner’s findings are incorrect or unreasonable, contention 2 is not
persuasive of Examiner error.
In connection with contention 3, Appellants argue that “the Office
Action does not proffer any analysis or technical reasoning as to why the
domain/sub-domain hierarchy of Green is somehow equivalent to an
updatable term as recited in claim 15.” App. Br. 13. The Examiner responds
that “the applicant’s argument is flawed because the claim mappings did not
relate the updatable terms to ‘domain/sub-domains’ but mapped them to
updatable terms (i.e.[0002] the search terms in Green are the ‘updatable
terms.’)” Ans. 19-20. In contrast, Appellants once again fail to identify
specific errors in the Examiner’s findings. Therefore, having presented us
with insufficient evidence or argument that the Examiner’s findings are
incorrect or unreasonable, contention 3 is not persuasive of Examiner error.
In connection with contention 4, Appellants argue that “Green does
not teach that a term data structure associates a legacy level of an updatable
term with a current level of an updatable term.” App. Br. 13. This contention
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is not persuasive of Examiner error for the reasons presented supra in
connection with contention 1.
In connection with contention 5, Appellants argue that “the Final
Office Action . . . does not proffer any technical reasoning as to why the
contextual search of Green is somehow equivalent to the term data structure
of claim 15.” App. Br. 14. The Examiner responds “the claim mappings did
not relate the updatable terms to ‘contextual search engine’ alone but
mapped them to the Green's Search Engine's ‘updatable term data structures’
(i.e.[0002] the search terms in Green are the ‘updatable term data
structures.’)” Ans. 20-21. Absent Appellants’ identification of specific error
in the Examiner’s findings, contention 5 is not persuasive of Examiner error.
In connection with contention 6, Appellants argue that while Green:
uses many user interface components . . . [t]he Final Office
Action simply fails to show one given user interface component
that is modified between the creation of the user interface
component instance and the presentation of the user interface
component instance to replace a user updatable term with its
surface level as identified based user preferences.
App. Br. 14. The Examiner asserts that Green’s search engine is a
modifiable user interface that is changed/modified based on a legacy level
(Ans. 19 citing to Green [0015]) and that Figs. 23-35 of Green disclose
different user interface screens meeting the requirement for forming a
modified instance of the user interface (Ans. 20.) Since Green discloses
multiple screens, it is reasonable that one such user interface is a
modification of another. In the absence of identification of particular error in
the Examiner’s rejection, we find that the Examiner’s characterization of
Green to be reasonable and agree with the Examiner that Green teaches or
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suggests forming a modified instance of the user interface component.
Therefore, on this record, having presented us with insufficient evidence or
argument that the Examiner’s findings are incorrect or unreasonable,
contention 6 is not persuasive of Examiner error.
In connection with contention 7, Appellants argue that “the Office
Action proffers no analysis as to why mapping a term to a parse tree
structure is somehow equivalent to creating a modified user interface
component having a surface level of a term and a term indicator that
indicates a hidden level of the updatable term.” App. Br. 15. The Examiner
responds:
Green teaches there are different indications in the user
interface ([0006]) (Examiner's Note: In other words, standard
lookup/translation functionality. Examiner's interpretation is
that the claimed invention is calling for a 'surface level' and an
indication of a 'hidden level'. Examiner's interpretation is that
Green allows for more than one level (i.e. a surface level and a
second 'hidden' level). (See Green ([0053] wherein the terms in
Green are (mapped to the data structure) and the user-entered
search term can be used to identify responsive information from
the source collection based on classification. The term may be
linked to more than one classification or lineage of the parse
tree (i.e. a current knowledge base level and a hidden level).
This may have benefit in matching a particular term with
multiple search strategies; See Also [0492] and Figs 23 - 26
wherein the user in Green can create a domain (i.e. knowledge
base level) and the Graphical User Interface indicates (i.e. a
term indicator) there is another level (i.e. a hidden level)).

Ans. 22.
Thus, one or more of Green’s classifications (e.g., base, parent and
grandparent) or lineage of the parse tree corresponds to the claimed hidden
level and the Graphical User Interface indication of another level
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corresponds to the claimed term indicator indicating that there is another
(i.e., hidden) level. In contrast, Appellants have not provided sufficient
evidence or argument to show error in the Examiner’s finding. Accordingly
Appellants’ contention 7 is not persuasive of Examiner error.
For the reasons supra, we sustain the rejection of claim 15 under 35
U.S.C. § 102(e).
In connection with contention 8 and claim 18, Appellants argue that
“Green does not teach displaying a description text associated with the
updatable term responsive to user activation of the term indicator” as
required by claim 18. App. Br. 17. The Examiner responds that Green
teaches the disputed limitation at par. [0095-97] and [101-105.] Ans. 24.
Appellants additionally argue that “the Final Office Action does not take
into account the claimed invention as a whole; rather, the Final Office
Action simply maps individual features from the claims to disparate portions
of the reference that appear to be close enough, but not exactly what is being
claimed.” App. Br. 17. However, other than reciting claim language,
1

Appellants do not explain why the disclosure of Green is deficient.
Therefore, on this record, having presented us with insufficient evidence or
argument that the Examiner’s findings are incorrect or unreasonable,

1
See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”).

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contention 8 is not persuasive of Examiner error. Therefore we sustain the
rejection of claim 18 under 35 U.S.C. § 102(e).
In connection with contention 9 and claim 20, Appellants argue that:
the Final Office Action proffers no analysis or technical
reasoning as to why any of [Green’s disclosure at para. [0402]-
[0404]] is equivalent to requesting updates for the set of
updatable terms from an updatable term service and responsive
to receiving an update for an updatable term from the updatable
term service, applying the update to the term data structure.
App. Br. 18. The Examiner finds:
FIG. 15 shows a conventional web system 1500 where, the
WebMethods integration server 1502 takes as input an SAP-
formatted content (i.e. requests updates for the set of up
datable terms) called an IDOC 1504 from a source back office
1501 via API 1503 and converts it into an XML-formatted
document 1506 for transmission over the Web 1508 via
optional application server 1510 and HTTP servers 1512 to
some other receiver such as a Target back office 1510 or other
ERP system. The document 1506 may be transmitted to Target
back office 1514 via HTTP servers 1516 and an integration
server 1518 (i.e. apply the updates).

Ans. 10-11.
Contrary to Appellants’ arguments, the Examiner has presented a
prima facie case for both anticipation and obviousness. Also contrary to
Appellants’ arguments, it is well established that the burden of going
forward has shifted to Appellants. “[W]hen the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.” In re Spada, 911 F.2d
705, 708 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by
evidence showing that the prior art products do not necessarily possess the
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characteristics of the claimed product. In re Best, 562 F.2d at 1255. See also
Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985).
Other than allege that “the Final Office Action proffers no analysis or
technical reasoning as to why [the disclosure of Green] is equivalent [to the
disputed claim language]” (App. Br. 18), Appellants have presented
insufficient evidence or specific argument that Green is deficient so as
persuade us of Examiner error. Therefore contention 9 is not persuasive and
we sustain the rejection of claim 20 under 35 U.S.C. § 102(e).
In connection with contention 10 Appellants argue “[t]he Final Office
Action does not address [the indicated claims]; therefore, the Final Office
Action does not establish a prima facie case of anticipation for [those]
claims.” App. Br. 16, 19. The Examiner responds by describing how the
detailed rejections of claims 15, 18, 20 and others are applied in rejecting
claims 16, 17, 22, 24-26, 28-32, and 34-36 and the basis in Green for
rejecting claim 21, 27, and 33. Therefore, absent sufficient evidence or
argument to persuade us that these rejections are otherwise in error, we
sustain the rejections of claims 16, 17, 21, 22, and 24-36 under 35 U.S.C.
§ 102(e).
In connection with contention 11 Appellants argue that “claims 15-18,
20-22, and 24-36 are improperly rejected under 35 U.S.C. § 103 and that the
Final Office Action does not establish a prima facie case of obviousness for
claims 15-18, 20-22, and 24-36.” App. Br. 21. As discussed supra, Green
teaches all the limitations of claims 15-18, 20-22, and 24-36. A disclosure
that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable
under 35 U.S.C. § 103, for “anticipation is the epitome of obviousness.”
Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984). See also In re
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Fracalossi, 681 F.2d 792, 794 (CCPA 1982); In re Pearson, 494 F.2d 1399,
1402 (CCPA 1974). Therefore, we sustain the rejection of claims 15-18, 20-
22, and 24-36 under 35 U.S.C. § 103(a).

CONCLUSION
The Examiner did not err in rejecting claims 15 – 18, 20 - 22, and 24 -
36 under 35 U.S.C. § 102(e) as being anticipated by Green.
The Examiner did not err in rejecting claims 15 – 18, 20 - 22, and 24 -
36 under 35 U.S.C. § 103(a) as being unpatentable over Green and the
common sense of one of ordinary skill in the art of “database searching.”

DECISION
The decision of the Examiner to reject claims 15 – 18, 20 - 22, and 24
– 36 is affirmed.

AFFIRMED

ELD