Ex Parte Beringer et al

Board of Patent Appeals and Interferences

Jun 25, 2012

11185222 (B.P.A.I. Jun. 25, 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.
11/185,222 07/19/2005 Joerg Beringer 6570P308 2553
8791 7590 06/25/2012
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
VO, TRUONG V
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
06/25/2012 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 JOERG BERINGER and SANDRA NIEVES
____________

Appeal 2010-001849
Application 11/185,222
Technology Center 2100
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-7 and 14-22. The Appellants
appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).

Appeal 2010-001849
Application 11/185,222
2
INVENTION
The following claim illustrates the invention on appeal:
1. A computer implemented method comprising:
determining an instantiated context of user activity; and,
subsequently,
generating a user interface solely based on the
instantiated context of user activity; and, subsequently,
executing a contextual search via the user interface based
on a query received at the user interface.

REJECTION
Claims 1-7 and 14-22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over U.S. Patent Application Pub. No. 2003/0220917 Al
("Copperman") and U.S. Patent Application Pub. No. 2002/0063734 Al
("Khalfay").

DISCUSSION
Based on the Appellants' arguments, we will decide the appeal of
claims 1-7 and 14-22 on the basis of claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii). There are two issues; we address these seriatim.

GENERATING A USER INTERFACE
The issue before us follows: Did the Examiner err in finding that
Khalfay teaches "generating a user interface solely based on the instantiated
context of user activity" before "executing a contextual search via the user
interface based on a query received at the user interface," as required by
representative claim 1?
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
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Application 11/185,222
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inherently." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations
omitted).
Here, we agree with the Examiner's following findings.
Khalfay discloses "generating a user interface solely based on
the instantiated context of user activity"[, which] can be
interpreted as (i.e., for the node selected, the corresponding
configuration hierarchy is queried and loaded into the List View
112. Note that the columns provided in the List View 112 are
dynamically generated subsequent to the user selection of
the tree node; [0086]). Simply stated the List View 112 is
being generated based on context of user's activity . . . .
(Ans. 10.)
The Appellants argue that "the user interface generated in Khalfay
corresponds to a selected computer application and not to an instantiated
context of user activity." (App. Br. 8.) We find, however, that the user's
selection of a computer application constitutes part of the context of his
activity.
The Appellants argue also that "in contrast to the teachings of the
Appellants, the user interface of Khalfay is generated subsequent to input of
a specific user query, the user query being the basis of a search." (Id.) We
find, however, that the reference does not load its List View in response to a
user's search query. Instead, it does so is in response to the user's selection
of nodes in a tree.
Therefore, we conclude that the Examiner did not err in finding that
that Khalfay teaches "generating a user interface solely based on the
instantiated context of user activity" before "executing a contextual search
via the user interface based on a query received at the user interface," as
required by representative claim 1.
Appeal 2010-001849
Application 11/185,222
4
COMBINING TEACHINGS OF REFERENCES
The issue before us follows: Did the Examiner err in combining
teachings from Copperman and Khalfay to reject representative claim 1?
The Appellants argue that "[i]f the method of Copperman were
modified with a user interface generated without first receiving a query from
the user, the user interface of Copperman would no longer be based on a
query, the query forming the basis of a search." (Reply Br. 5.)
"[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review." In re
Sneed, 710 F.2d 1544, 1550 Fed. Cir. 1983 (citing Orthopedic Equip. Co. v.
United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391
F.2d 953, 958 (CCPA 1968)); see also In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) ("Combining the teachings of references does not involve an
ability to combine their specific structures."). "The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . . Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA
1981).
Here, the Examiner does not propose that the features of Khalfay be
bodily incorporated into the structure of Copperman. Instead, he concludes
that the combined teachings of the references would have suggested the
Appellants' invention.
Specifically, the Examiner relies on Copperman to teach an initial
user interface for performing searches in response to queries. More
specifically, we agree with his findings that in Copperman a "user cannot
Appeal 2010-001849
Application 11/185,222
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input a query into a user interface if there's no interface being displayed"
(Ans. 12) and that "a user interface has to be created/opened before any user
input is being taken." (Id.)
Furthermore, the Examiner relies on Khalfay to teach dynamically
altering a user interface, i.e., to "generate different versions of a [graphical
user interface] dynamically" (id. at 4), based on the user's selection of nodes
in a tree. Regardless of Khalfay's teaching, we find that Cooperman's initial,
unaltered user interface would receive queries and execute searches based
thereon. We further find that the altered versions of the user interface would
continue to receive queries and execute searches based thereon. The
Appellants' argument overlooks "the relevant combined teachings of the . . .
references." Andersen, 391 F.2d at 958 (dismissing the argument that a
combination would result in an inoperative structure).
Therefore, we conclude that the Examiner did not err in combining
teachings from Copperman and Khalfay to reject representative claim 1.

DECISION
We affirm the rejection of claim 1 and of claims 2-7 and 14-22, which
fall therewith.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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