Ex Parte Bartek et al

Board of Patent Appeals and Interferences

Sep 28, 2010

10754375 (B.P.A.I. Sep. 28, 2010)

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.
10/754,375 01/09/2004 Velda Bartek RSW920030211US1 (125) 7782
46320 7590 09/28/2010
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
ULRICH, NICHOLAS S
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
09/28/2010 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 VELDA BARTEK, KATHRYN H. BRITTON,
SAMAR CHOUDHARY, JOHN R. HIND, and
SHIKHA SRIVASTAVA
____________________

Appeal 2009-008535
Application 10/754,3751
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JAY P. LUCAS, and JAMES R. HUGHES,
Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed January 9, 2004. The real party in interest is IBM Corp.
(App. Br. 1.). This Appeal is related to Appeal No. 2009-001746.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008535
Application 10/754,375

2
STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 1-16 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ Invention
The invention at issue on appeal relates to an application help system,
apparatus, and method for providing (rendering) composite help content
(views) for an aggregation of separate applications, units, and/or views.
(Spec. 4, ¶ [0009].)3
Representative Claim
Independent claim 1 further illustrates the invention. It read as
follows:
1. A method for producing a composite help view for an
aggregation of applications, the method comprising the steps of:
obtaining at least two separate help documents, each of
said at least two separate help documents having an association
with a corresponding one of separate interface units aggregated
together into a single aggregated view;
combining said at least two separate help documents into
a composition of help documents corresponding to said single
aggregated view; and,
rendering said composition of help documents in a help
system view responsive to a request for help initiated in said
single aggregated view.

3 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed July 21, 2008; and Reply Brief (“Reply Br.”) filed December 15, 2008.
We also refer to the Examiner’s Answer (“Ans.”) mailed October 15, 2008.
Appeal 2009-008535
Application 10/754,375

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References
The Examiner relies on the following references as evidence of
unpatentability:
Hickman US 5,361,361 Nov. 1, 1994

Palaniappan US 2002/0054152 A1 May 9, 2002

Lillie US 2005/0065913 A1 Mar. 24, 2005
(filed Sep. 22, 2003)

Rejections on Appeal
The Examiner rejects claims 1-3, 5, 7, 11-13, and 15 under
35 U.S.C. § 102(b) as being anticipated by Hickman.
The Examiner rejects claims 4 and 14 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hickman and Palaniappan.
The Examiner rejects claims 8-10 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hickman and Lillie.
The Examiner rejects claims 6 and 16 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hickman and Official Notice.

ISSUE
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us is as follows:
Does the Examiner err in finding the Hickman reference discloses
combining at least two separate help documents into a composition help
document corresponding to a single aggregated view?

Appeal 2009-008535
Application 10/754,375

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FINDINGS OF FACT (FF)
Hickman Reference
1. Hickman describes a hierarchical integrated help utility that
integrates help information across multiple independent applications. The
help utility integrates and displays in a single window the help directory
information (help file directories) and related descriptors of each application
installed on a computer system. (Col. 1, l. 50 to col. 2, l. 7; col. 4, ll. 20-61;
col. 5, l. 49 to col. 6, l. 36; Figs. 3, 4A, 4B, 5.)
2. Hickman does not describe combining two or more separate
help documents into a composite help document. Rather, Hickman
describes its help utility integrating and displaying help directory
information for separate applications. The utility then accesses the
individual help file information (documents) utilizing the integrated
directory information, and displays the help information in the help utility
window. (Col. 4, ll. 20-61; col. 6, ll. 37-66; Figs. 3, 4A, 4B, 5.)

ANALYSIS
Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner sets forth a
detailed explanation of a reasoned conclusion of anticipation in the
Examiner’s Answer with respect to Appellants’ independent claim 1 (Ans. 4,
12-14), independent claim 7 (Ans. 6, 15-16), and dependent claims 3 and 13
(Ans. 5, 8, 14-15). The Examiner also sets forth a detailed explanation of a
reasoned conclusion of obviousness in the Examiner’s Answer with respect
Appeal 2009-008535
Application 10/754,375

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to dependent claims 4 and 14 (Ans. 9-10, 16), 8-10 (Ans. 10-11, 16), and 6
and 16 (Ans. 11-12, 16). Therefore, we look to the Appellants’ Briefs to
show error in the proffered reasoned conclusions. See Kahn, 441 F.3d at
985-86.
Arguments Concerning the Examiner’s Rejection of
Claims 1-3, 5, 7, 11-13, and 15 under 35 U.S.C. § 102(b)
The Examiner rejects Appellants’ claim 1 for being anticipated by the
Hickman reference. (Ans. 4, 12-14.) Appellants contend, inter alia, that
Hickman does not disclose a composition of help documents combined from
at least two separate help documents into an aggregated view (App. Br. 7-
10) – “the Examiner has failed to establish that [Hickman’s] ‘Bookcase
Help’ has been aggregated together with ‘application 1’ and ‘application 2’
as part of the single aggregated view” (App. Br. 10). The Examiner finds
that Hickman discloses a composition help document combined from at least
two separate help documents into an aggregated view. (Ans. 4, 12-14.)
Based on the record before us, we find error in the Examiner’s
anticipation rejection of Appellants’ claim 1. We agree with Appellants that
the Hickman reference does not disclose the disputed feature of “combining
said at least two separate help documents into a composition of help
documents corresponding to said single aggregated view” for essentially the
reasons espoused by Appellants.
As detailed in the Findings of Fact section supra, Hickman describes a
help utility integrating and displaying help directory information for separate
applications in a single help utility window. On user initiation, the utility
accesses each applications’ individual help file information (documents) and
Appeal 2009-008535
Application 10/754,375

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displays the information in the help utility window. (FF 1-2.) Hickman
does not even mention composite help documents.
Consequently, we find the Hickman reference fails to disclose
combining at least two separate help documents into a composition help
document corresponding to a single aggregated view. We, therefore, are
constrained by the record before us to find that Hickman does not disclose at
least the disputed feature of “combining said at least two separate help
documents into a composition of help documents corresponding to said
single aggregated view.” The Examiner has failed to set forth a prima facie
anticipation rejection. It follows that Appellants have persuaded us to find
error in the Examiner’s anticipation rejection of Appellants’ independent
claim 1.
Appellants’ independent claim 11 includes limitations commensurate
in scope to claim 1. Appellants’ independent claim 7 includes a limitation
similar in scope to the disputed limitation of claim 1 – “an application
aggregator configured to aggregate individual interface units into a single
aggregated view . . . each of said at least two help documents corresponding
to one of said individual interface units” (see Br. 19, Claim App’x., claim 7).
It follows, for the reasons discussed supra, that the Hickman reference also
does not anticipate Appellants’ independent claims 7 and 11. Appellants’
dependent claims 2, 3, and 5 (dependent on claim 1), and dependent claims
12, 13, and 15 (dependent on claim 11) depend on their respective base
independent claims. Therefore, based on the record before us, we find that
the Examiner erred in finding the Hickman reference discloses each
limitation recited in Appellants’ claims 1-3, 5, 7, 11-13, and 15.
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Application 10/754,375

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Accordingly, we reverse the Examiner’s anticipation rejection of these
claims.
Rejection of Claims 4, 6, 8-10, 14, and 16 under § 103
Appellants do not separately argue the Examiner’s obviousness
(§ 103) rejections of dependent claims 4 and 14 (App. Br. 13), 8-10 (App.
Br. 14), and 6 and 16 (App. Br. 14), instead relying on the arguments made
with respect to claim 1 (supra). Based on the record before us, we also find
error in the Examiner’s obviousness rejection of Appellants’ dependent
claims 4, 6, 8-10, 14, and 16. As we explained with respect to claim 1
supra, the Hickman reference does not disclose at least one feature recited in
the claims. The Examiner rejects each of claims 4, 6, 8-10, 14, and 16 as
unpatentable in view of a combination including the Hickman reference.
(Ans. 9-12.) None of the cited references cures the deficiencies of the
Hickman reference. Accordingly, we must also reverse the Examiner’s
obviousness rejections of claims 4, 6, 8-10, 14, and 16.

CONCLUSIONS OF LAW
Appellants have shown that the Examiner erred in rejecting claims 1-
3, 5, 7, 11-13, and 15 under 35 U.S.C. § 102(b).
Appellants have shown that the Examiner erred in rejecting claims 4,
6, 8-10, 14, and 16 under 35 U.S.C. § 103(a).

DECISION
We reverse the Examiner’s rejection of claims 1-3, 5, 7, 11-13, and 15
under 35 U.S.C. § 102(b).
Appeal 2009-008535
Application 10/754,375

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We reverse the Examiner’s rejection of claims 4, 6, 8-10, 14, and 16
under 35 U.S.C. § 103(a).

REVERSED

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