Ex Parte Bleizeffer et al

Board of Patent Appeals and Interferences

Jan 13, 2012

10712467 (B.P.A.I. Jan. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TERRY MICHAEL BLEIZEFFER, MICHAEL PETER ETGEN,
PRASAD MAGADI KASHYAP, THERESA DIANE RAMSEY, and
RENEE LAVONNE SCHWARTZ
____________

Appeal 2009-012668
Application 10/712,467
Technology Center 2100
____________

Before ERIC S. FRAHM, JEFFREY S. SMITH, and DAVID M. KOHUT,
Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012668
Application 10/712,467

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-24, which are all the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Invention
Appellants’ invention relates to a user interface with inline representation of
steps in a multi-stepped process. Each step of a given task is presented as a
concise description. When a step is selected, the step content is displayed inline
within the series of steps. The user interface with inline representation of steps in a
multi-stepped process may be accomplished using a Java Server Page with a Struts
framework and a Tiles framework. Abstract.

Representative Claim
1. A method for presenting a step of a task, wherein the task
includes a series of steps to be performed, the method comprising:

identifying a current step within the series of steps;

retrieving a step component for the current step; and

presenting the current step inline within the series of
steps such that the step component is presented in context
within the series of steps.

Examiner’s Rejections
Claims 1-4, 11-14, and 24 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Keane et al. (US 6,650,433 B1). Ans. 4-7.
Appeal 2009-012668
Application 10/712,467

Claims 5-6, 8-10, 15-16, 18-21, and 23 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Keane and Hind et al. (US 6,715,129 B1). Ans.
7-15.
Claims 7, 17, and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Keane, Hind, and Scheinblum (Make Your Applications Strut,
available at http://articles.techrepublic.com.com/5100-22-1027640.html (March 5,
2002)). Ans. 15-17.

Claim Groupings
In view of Appellants’ arguments in the Appeal Brief, we will decide the
appeal on the basis of claims 1, 5, and 7.

ISSUES
(1) Did the Examiner err in finding that Keane describes “retrieving a
step component for the current step” as recited in claim 1?
(2) Did the Examiner err in finding that Keane describes “presenting the
current step inline within the series of steps such that the step component is
presented in context within the series of steps” as recited in claim 1?
(3) Did the Examiner err in finding that the combination of Keane and
Hind teaches “presenting the current step inline within the series of steps includes
generating a response page using a JAVA Server Page” as recited in claim 5?
(4) Did the Examiner err in determining that Keane and Hind qualify as
prior art for an obviousness determination?
(5) Did the Examiner err in finding that the combination of Keane, Hind,
and Scheinblum teaches “generating a response page includes building the
response page using a Struts framework” as recited in claim 7?
Appeal 2009-012668
Application 10/712,467

(6) Did the Examiner err in determining that Keane, Hind, and
Scheinblum qualify as prior art?

ANALYSIS
Section 102 rejection of claims 1-4, 11-14, and 24
Claim 1 recites “retrieving a step component for the current step.” App. Br.
13. The Examiner finds that there are two ways that Keane discloses retrieving a
step component. Ans. 17. First, Keane discloses that clicking on the “Orientation”
step brings up the step component of selecting either a horizontal or vertical
orientation. Id., citing Fig. 4A. Second, Keane discloses that clicking on the
“Template” step will bring up step components “Category 2,” “Category 3,” and
“VCategory 1,” listed below the step “Template” and displayed in the window.
Ans. 17-18, citing Fig. 4B. Appellants argue that the “templates” are not step
components, but rather categories of templates and not part of the step. App. Br.
13-14. The Examiner interprets “retrieving a step component” as displaying
additional information related to the step. Ans. 17. We find this interpretation
both reasonable and consistent with Appellants’ Specification. We agree with the
Examiner’s findings that the additional information for the orientation and
template steps displayed in Figs. 4A and 4B of Keane describes “retrieving a step
component” within the meaning of claim 1. Thus, we agree with the Examiner that
Keane discloses retrieving a step component for the current step.
Appellants further argue that Keane does not disclose “presenting the current
step inline within the series of steps such that the step component is presented in
context within the series of steps” as recited in claim 1. App. Br. 13, 15.
Appellants’ argument is based on the premise that Keane does not disclose a step
component, which we find unpersuasive as discussed above.
Appeal 2009-012668
Application 10/712,467

We sustain the Examiner’s rejection of claim 1-4, 11-14, and 24 under 35
USC § 102(b).

Section 103 rejection of claims 5-6, 8-10, 15, 16, 18-21 and 23
Claim 5 recites “wherein presenting the current step inline within the series
of steps includes generating a response page using a JAVA Server Page.” App. Br.
16. Appellants contend that the combination of Keane and Hind does not teach a
step component as recited in claim 1. App. Br. 16-17. We find that the
combination of Keane and Hind teaches a step component as discussed in our
analysis of claim 1 above.
Appellants argue that the Examiner fails to state a proper reason with some
rational underpinning to achieve the legal conclusion of obviousness. App. Br. 17.
The Examiner concludes that it would have been obvious to combine Hind’s
servlet or Java Server Page environment with Keane’s JavaScript system to more
easily allow the dynamic creation of web content (citing Hind, col. 1, ll. 18-20).
Ans. 19. Appellants have not provided evidence or persuasive argument to rebut
the Examiner’s conclusion.
Further, the Supreme Court held that an explicitly stated motivation to
combine the references is seen as a “helpful insight,” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) but that the combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results. Id. at 416. In this situation, we find that the combination of
Hind’s servlet or Java Server Page environment with Keane’s JavaScript system
yields the predictable result of dynamically generating content for a Web Page.
Additionally, Appellants argue that Keane and Hind are nonanalogous art.
App. Br. 18-21. A reference qualifies as prior art for an obviousness determination
Appeal 2009-012668
Application 10/712,467

under § 103 only when it is analogous to the claimed invention. Our reviewing
court directs us to apply two criteria when determining whether a prior art
reference is analogous: (1) whether the reference is from the same field of
endeavor as the claimed invention, and (2) if the reference is not within the same
field of endeavor, whether the reference is reasonably pertinent to the particular
problem with which the inventor is involved. In re Klein, 647 F.3d 1343 (Fed. Cir.
2011). When neither criterion is met, the reference is deemed nonanalogous and is
not considered prior art in making an obviousness determination under § 103.
Appellants contend that Hind is not in the same field of endeavor because
Hind is directed to the field of remote login to graphical user interface server and
the claimed invention is in the field of presenting methods to users. App. Br. 19.
However, Appellants state that the field of their invention relates to data processing
systems, and in particular, to user interfaces for performing multi-stepped
processes. Spec. 1:5-11. The field of endeavor of Hind relates to data processing
systems. Title; Abstract. The field of endeavor of Hind also relates to user
interfaces for performing multi-stepped processes, such as remote login to a
graphical user interface server. App. Br. 19. Thus, we agree with the Examiner
that Hind is from the same field of endeavor as the invention.
Appellants also contend that Hind is not reasonably pertinent to the
particular problem with which Appellants are concerned. According to Appellants,
Hind is directed to the problem of providing Java server pages in transcoding
environments, and claim 5 is directed to the problem of presenting methods to
users. App. Br. 19. “A reference is reasonably pertinent if, even though it may be
in a different field from that of the inventor’s endeavor, it is one which, because of
the matter with which it deals, logically would have commended itself to an
inventor’s attention in considering his problem.” In re Icon Health and Fitness,
Appeal 2009-012668
Application 10/712,467

Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (citations omitted). In other words,
“familiar items may have obvious uses beyond their primary purposes.” Id. at
1380, citing KSR Int’l., 550 US 398.
Appellants’ claim 5 recites “presenting the current step inline within the
series of steps includes generating a response page using a JAVA Server Page.”
Nothing about generating the response page using a JAVA Server Page requires
any particular focus on presenting methods to users; it generally addresses
problems of presenting such information using a JAVA Server Page. See Spec.
7:4-21, 19:19-22. Analogous art to Appellants’ application, when considering the
JAVA Server Page limitation, may come from any area describing generating a
response page using a JAVA Server Page such as the JAVA Server Page scripting
language described by Hind. Accordingly, we conclude that Hind provides
analogous art.
Appellants argue that Keane is non-analogous art because Keane is not in
the field of presenting methods to users. App. Br. 21. However, Appellants state
that the field of their invention relates to data processing systems, and in particular,
to user interfaces for performing multi-stepped processes. Spec. 1:5-11. The field
of endeavor of Keane relates to data processing systems. Abstract. The field of
Keane also relates to user interfaces for performing multi-stepped processes as
shown in Figs. 4A and 4B and as discussed in our analysis of claim 1.
Appellants further contend that Keane is not reasonably related to the
problem to be solved, which is overcoming the shortcomings of help wizards.
App. Br. 21. We find that Keane is reasonably pertinent to overcoming the
shortcomings of help wizards. See Figs. 4A and 4B; col. 10, l. 45 to col. 12, l. 65.
Therefore, we conclude that Keane provides analogous art.
Appeal 2009-012668
Application 10/712,467

We sustain the rejection of claims 5, 6, 8-10, 15, 16, 18-21 and 23 under 35
USC § 103(a).

Section 103 rejection of claims 7, 17, and 22
Appellants argue that the combination of Keane, Hind, and Scheinblum do
not disclose the limitations of claim 7. App. Br. 23. Appellants present no
substantive arguments regarding these claims other than merely restating the
limitations called for in independent claim 1. App. Br. 23-24. 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, 99 USPQ2d 1373, 1379 (Fed. Cir. 2011) (“we 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.”). For the reasons
discussed in our analysis of claim 1, we agree with the Examiner.
Appellants additionally argue that the Examiner failed to state a proper
reason with some rational underpinning to achieve the legal conclusion of
obviousness under the standards of KSR Int’l. App. Br. 24. The Examiner
concludes that it would have been obvious to combine Keane, Hind, and
Scheinblum in order to dynamically generate content using the Java-based Struts
framework to create tiles and frames on a Keane’s business card wizard. Ans. 20.
We agree with the Examiner. Further, we find that the combination of Hind’s
servlet or Java Server Page environment and Scheinblum’s Struts framework with
Keane’s JavaScript system yields the predictable result of generating content for a
Web Page using Struts to create tiles and frames.
Appeal 2009-012668
Application 10/712,467

Appellants argue that Keane and Scheinblum are nonanalogous to claim 7.
App. Br. 24. We find that Keane provides analogous art for the reasons discussed
in our analysis of claim 5. Appellants argue that Scheinblum is non-analogous art
because Scheinblum is not from the same field of endeavor of presenting steps in a
process. App. Br. 24. However, Appellants state that the field of their invention
relates to data processing systems, and in particular, to user interfaces for
performing multi-stepped processes. Spec. 1:5-11. The field of endeavor of
Scheinblum relates to data processing systems. Page 1. The field of Scheinblum
also relates to user interfaces for performing multi-stepped processes, such as
separating business logic from an interface to make large-scale Web applications
more manageable. Id.
Further, Scheinblum is also pertinent to the problem to be solved of using a
Struts framework as required by claim 7. The Examiner finds that Scheinblum
teaches using Struts to present data in web pages. Ans. 20. Appellants have not
provided evidence or persuasive argument to rebut the Examiner’s finding.
Therefore, we agree with the Examiner that Keane, Hind, and Scheinblum
provide analogous art to the invention of claim 7. We sustain the rejection of
claims 7, 17 and 22 under 35 USC § 103(a).

CONCLUSIONS
(1) The Examiner did not err in finding that Keane describes “retrieving a
step component for the current step” as recited in claim 1.
(2) The Examiner did not err in finding that Keane describes “presenting
the current step inline within the series of steps such that the step component is
presented in context within the series of steps” as recited in claim 1.
Appeal 2009-012668
Application 10/712,467

(3) The Examiner did not err in finding that the combination of Keane
and Hind teaches “presenting the current step inline within the series of steps
includes generating a response page using a JAVA Server Page” as recited in claim
5.
(4) The Examiner did not err in determining that Keane and Hind qualify
as prior art for an obviousness determination.
(5) The Examiner did not err in finding that the combination of Keane,
Hind, and Scheinblum teaches “generating a response page includes building the
response page using a Struts framework” as recited in claim 7.
(6) The Examiner did not err in determining that Keane, Hind, and
Scheinblum qualify as prior art.

DECISION
The rejection of claims 1-4, 11-14, and 24 under 35 U.S.C. § 102(e) is
affirmed.
The rejection of claims 5-10, 15-23 under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f).

AFFIRMED

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