Ex Parte McNally et al

Board of Patent Appeals and Interferences

May 30, 2012

11292242 (B.P.A.I. May. 30, 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.
11/292,242 12/01/2005 Robert Christopher McNally NG(MS)7715 2664
26294 7590 05/31/2012
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
HARPER, ELIYAH STONE
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
05/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT CHRISTOPHER MCNALLY and
WILLIAM DANIEL HILLIS
____________________

Appeal 2010-001993
Application 11/292,242
Technology Center 2100
____________________

Before JOSEPH L. DIXON, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/292,242

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I. STATEMENT OF THE CASE
Appellants appeal from the Examiner’s final rejection of claims 1-13
and 16-20 under 35 U.S.C. § 134(a) (2007). Claims 14 and 15 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2007).
We reverse.

A. INVENTION
According to Appellants, the invention relates to carrying out end-to-
end Frame Relay communications over an ATM based network including a
DSL link assisted decision making applications and, more particularly, to an
interactive tool for constructing and editing a process diagram (Spec. 1, ¶
[0001]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A computer system that assists a user in creating a
process diagram according to a specific methodology,
comprising:

a memory for storing computer executable instructions;

a processing unit for accessing the memory and
executing computer executable instructions;

a template library stored in the memory comprising a
plurality of entities associated with the methodology, each of
the plurality of entities having an associated one of a plurality
of entity categories;

computer executable instructions stored in the memory
comprising a user interface configured to allow a user to
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graphically insert entities from the library into the process
diagram and graphically insert connections between the entities
to display logical relationships between the entities on a display
that define an original arrangement of the entities; and

computer executable instructions stored in the memory
comprising a graphical engine configured to generate an
optimal arrangement of the entities for display on the display
within the process diagram according to at least one
characteristic of a plurality of entities and at least one connector
displayed on the display associated with the process diagram
and at least one optimization criteria when a user inserts an
entity or connection, the graphical engine configured to
animate a transition between the original arrangement and the
optimal arrangement over a plurality of video frames on the
display.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Corynen US 6,735,596 B2 May 11, 2004
Schirmer US 2003/0131007 Al Jul. 10, 2003

Claims 1-13 and 16-20 stand rejected under 35 U.S.C. § 103(a) over
the teachings of Corynen in view of Schirmer.

II. ISSUE
Has the Examiner erred in finding that Corynen in view of Schirmer
would have taught or suggested “a graphical engine” that is configured to
“generate an optimal arrangement of the entities for display … when a user
inserts an entity or connection” and to “animate a transition between the
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Application 11/292,242

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original arrangement and the optimal arrangement over a plurality of video
frames” (claim 1, emphasis added)?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Corynen
1. Corynen discloses a stand-alone computer application for globally
optimizing the operation of systems and processes; the application
embodying a method that includes procedures to assist a user in the
construction of objectives hierarchies, utility functions, etc.; and a
method that includes procedures for manipulating and editing textual
and graphical outputs (Abstract).
2. When using risk as an optimization criterion, the optimal choice is the
choice whose selection minimizes risk (col. 7, ll. 39-49).
3. In an exemplary hierarchy whose principal objective 186 is “Select
optimal voting machine” and shows the result of translating Objective
188 (“Minimize total machine cost”) and its sub-hierarchy one level
downward, a new objective may be inserted anywhere in the hierarchy
(col. 24, ll. 32-39; Fig. 20).
Schirmer
4. Schirmer discloses managing and presenting information as a domain
of data objects which can be grouped according to their category or
“object types” (Abstract), wherein, by selecting a secondary data
object, the corresponding secondary object becomes the primary
object set, and the primary object set now becomes the secondary
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object and thus allows the user to view the same sub-network of data
along different object type axes so as to discern new relationships,
context and meaning (p. 2, ¶ [0027]).

IV. ANALYSIS
Appellants contend that “[d]etermination of an optimal choice, as
disclosed in Corynen, does not correspond to generating an optimal
arrangement of entities, as recited in claim 1” (App. Br. 8). In particular,
Appellants assert that “the recited ‘optimal arrangement of entities’ show the
same entities as the recited ‘original arrangement of entities’” while, in
contrast, “displaying of a tree and a sub-tree in Corynen do not show the
same entities” (Reply Br. 4).
Appellants further contend that “Schirmer fails to teach or suggest an
animation to display the disclosed context filtering” (App. Br. 9). In
particular, Appellants contend that “both the ‘view pivoting’ and
highlighting and italicizing disclosed in Schirmer appear to be instantaneous,
(e.g., no animation over a plurality of video frames on the display, as recited
in claim 1)” (Reply Br. 4).
After reviewing the record on appeal, we agree with Appellants. That
is, we cannot find any suggestion of any engine that is configured to
“generate an optimal arrangement of the entities for display” or “animate a
transition between the original arrangement and the optimal arrangement
over a plurality of video frames” as required by claim 1, in the sections of
Corynen and Schirmer referenced by the Examiner.
In particular, the sections in Corynen referenced by the Examiner
merely disclose an application for optimizing the operation of systems and
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processes (FF 1) but are silent as to any optimizing of an “arrangement” of
entities for display. Though Corynen discloses selecting an optimal choice
which minimizes risk (FF 2) and also discloses arrangement of entities in a
hierarchy for display (FF 3), nothing in the referenced sections of Corynen
even suggests an engine that is configured to generate the optimal
arrangement of the entities.
Further, the sections in Schirmer referenced by the Examiner merely
disclose allowing the user to view sub-network of data along different object
type axes so as to discern new relationships, context and meaning (FF 4) but
are silent as to any animation let alone the animation of the transition
between an original arrangement and its optimal arrangement.
As such, we find that the Examiner erred in rejecting representative
claim 1. Independent claims 10 and 18 recite similar features as those of
claim 1 and thus stand with claim 1, as well as claims 2-9, 11-13, 16, 17, 19,
and 20 depending respectively from claims 1, 10, and 18, over Corynen in
view of Schirmer.

V. CONCLUSION AND DECISION
We reverse the Examiner’s rejection of claims 1-13 and 16-20 under
35 U.S.C. § 103(a).

REVERSED

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