Ex Parte Bocking et al

Board of Patent Appeals and Interferences

Apr 23, 2010

10931054 (B.P.A.I. Apr. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANDREW D. BOCKING, MICHAEL T. HARDY, and ROBERT
J.T. BREDIN
____________________

Appeal 2009-006161
Application 10/931,054
Technology Center 2100
____________________

Decided: April 23, 2010
____________________

Before ST. JOHN COURTENAY, III, THU A. DANG, and CAROLYN D.
THOMAS, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-006161
Application 10/931,054

I. STATEMENT OF CASE
Appellants appeal the Examiner’s final rejection of claims 1-7, 10-18,
and 20-32 under 35 U.S.C. § 134(a). Claims 8, 9, 19, and 33-37 have been
canceled.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellants, the invention relates to “a handheld
electronic device including a search function” and “a method of searching
for data on a handheld electronic device” (Spec. 1, ll. 7-10).

B. ILLUSTRATIVE CLAIMS
Claim 1 is exemplary and reproduced below:

1. A method of searching for Personal Information
Management information of a handheld electronic device, said
method comprising:

accepting input of at least one search criteria;

accepting input of a representation of a plurality of
components of said handheld electronic device including
Personal Information Management information to be searched;

1 The Appeal Brief, Examiner’s Answer, and Reply Brief do not state
the status of claims 8 and 9. However, the Appeal Brief states that the
“claims involved in this appeal are set forth in Appendix 1” (App. Br. 1) and
the Answer confirms that the “statement of status of the claims contained in
the brief is correct” (Ans. 2). Thus, in view of the Appeal Brief’s omission
of claims 8 and 9 from Appendix 1, we treat claims 8 and 9 as being
canceled.
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accepting input to select at least two of said plurality of
components;

conducting a search of said components based upon said
at least one search criteria and said selected at least two of said
plurality of components;

determining at least one search result from said search;

displaying said at least one search result;

employing as said components a plurality of different
applications;

employing as said at least one search result a plurality of
search results;

displaying said search results on a search results screen;

displaying each of said search results including a
plurality of alpha or alphanumeric characters;

for each of said different applications, displaying each of
said search results from a corresponding one of said different
applications in a different corresponding manner; and

for each of said search results of said search results
screen, displaying a corresponding one of said search results in
the same different corresponding manner as said different
corresponding manner of said corresponding one of said
different applications.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Siitonen US 6,049,796 Apr. 11, 2000
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Schroeder US 6,405,060 B1 Jun. 11, 2002
Schmidt US 2003/0004922 A1 Jan. 02, 2003
Miyakawa US 2004/0117348 A1 Jun. 17, 2004
Schuetze US 6,751,612 B1 Jun.15, 2004
Lueder US 2005/0080770 A1 Apr. 14, 2005
Milic-Frayling US 2005/0132296 A1 Jun. 16, 2005
Lowles US 2005/0246365 A1 Nov. 03, 2005
Chaudhri US 2006/0015818 A1 Jan. 19, 2006

Claims 1-3, 14-18, 27, and 32 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combined teachings of Schroeder, Miyakawa,
and Lueder.2
Claims 4-7 and 29-31 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schroeder, Miyakawa, Lueder, and Chaudhri.3
Claims 10-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schroeder, Miyakawa, Lueder, and Siitonen.
Claims 20-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schroeder, Miyakawa, Lueder, and Schmidt.
Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schroeder, Miyakawa, Lueder, Schmidt, and Schuetze.

2 The Examiner’s Answer states that claims 33 and 34 also stand
rejected over Schroeder, Miyakawa, and Lueder (Ans. 4), but the Appeal
Brief states that claims 33 and 34 are canceled (App. Br. 1). Since the
Answer confirms that the “statement of status of the claims contained in the
brief is correct” (Ans. 2), we treat claims 33 and 34 as being canceled.

3 The Examiner’s Answer states that claims 35-37 also stand rejected
over Schroeder, Miyakawa, Lueder, and Chaudhri (Ans. 12), but the Appeal
Brief states that claims 35-37 are canceled (App. Br. 1). Since the Answer
confirms that the “statement of status of the claims contained in the brief is
correct” (Ans. 2), we treat claims 35-37 as being canceled.
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Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schroeder, Miyakawa, Lueder, and Milic-Frayling.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schroeder, Miyakawa, Lueder, and Lowles.

II. ISSUES
Has the Examiner erred in finding that Lueder discloses “for each of
said different applications, displaying each of said search results from a
corresponding one of said different applications in a different corresponding
manner; and for each of said search results of said search results screen,
displaying a corresponding one of said search results in the same different
corresponding manner as said different corresponding manner of said
corresponding one of said different applications” (claim 1), as Appellants
contend?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Lueder
1. Lueder discloses a system “for graphically displaying the results of a
standard electronic search to a user on a display device via an
interactive search results window in which the user views and refines
search results items using a tree format” (Abstract).
2. The search window includes a tree with a first level indicating how
the search result items are filtered (e.g., by when “created,” when
“modified,” “name,” or “facets”) and a second level indicating subsets
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of the search result items (e.g., “files,” “web pages,” “messages,”
“tasks,” and “contacts” are available “facets”) (¶¶ [0037], [0041], and
[0045]; Figs. 2 and 4).
3. Lueder’s Fig. 4 illustrates a search window that has filtered/grouped
the search result items by facet (as indicated by expansion of the first-
level “facets” filter and by the groupings of 5,540 “web pages” items
and 1,503 “messages” items) and is displaying only the “web pages”
items (as indicated by highlighting of the second-level “web pages”
subset) (¶¶ [0018] and [0049]; Fig. 4).
4. Lueder’s Fig. 2 illustrates a search window that has filtered the search
result items by creation date (as indicated by highlighting of the first-
level “created” filter) (¶¶ [0016], [0041], and [0045]; Fig. 2).
5. In Fig. 2, each of the “web pages” items has a page-like icon and a
name with an http format (e.g., “http://mediapresence/barctv/”) and
each of the “messages” items has an envelope-like icon and a name
with a subject line format (e.g., “RE: mindswap plan – planning the
…”) (Fig. 2).
IV. PRINCIPLES OF LAW
Claim Interpretation
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). “[T]he PTO gives
claims their ‘broadest reasonable interpretation.’” In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000)). “Moreover, limitations are not to be read into the claims from
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the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
35 U.S.C. § 103(a)
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and discussed circumstances in which a patent might be determined to
be obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that “[t]he
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 affirming a determination of obviousness, the Federal Circuit has
relied, in part, on an applicant’s failure to present evidence that the proposed
combination of teachings was “uniquely challenging or difficult for one of
ordinary skill in the art” or “represented an unobvious step over the prior
art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418-19).

V. ANALYSIS
In this Decision, we have considered only those arguments actually
made by Appellants. Arguments which Appellants could have made but did
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not make in their briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Claims 1-3, 14-18, 27, and 32
As to independent claim 1, Appellants argue that Lueder does “not
teach or suggest how search results might be displayed” in its search
windows (App. Br. 7), such as “what might be displayed if one of
‘Appointments’, ‘Contacts’ or ‘Messages’” is selected (App. Br. 8). The
Examiner responds that Lueder’s system displays “the search results in a tree
format in which the results are grouped to different categories such as
‘Files’, ‘Web pages’, ‘Messages’, ‘Tasks’, ‘Contacts’, and ‘Appointments’”
(Ans. 23); and, accordingly, discloses that “the search results of different
applications (e.g., contacts, messages, appointments, user tasks) are grouped
and displayed in different manners under ‘Contacts’, ‘Massages’ [sic],
‘Appointments’, and ‘Task’” (Ans. 23-24).
In view of the above, an issue we address on appeal is whether Lueder
discloses “for each of said different applications, displaying each of said
search results from a corresponding one of said different applications in a
different corresponding manner; and for each of said search results of said
search results screen, displaying a corresponding one of said search results
in the same different corresponding manner as said different corresponding
manner of said corresponding one of said different applications” (claim 1),
as Appellants contend.
We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d at 1324. Furthermore, our analysis
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will not read limitations into the claims from the specification. See In re
Van Geuns, 988 F.2d at 1184.
We broadly but reasonably construe “for each of said different
applications, displaying each of said search results from a corresponding one
of said different applications in a different corresponding manner” (claim 1)
as requiring that, in at least one “manner,” search results of each application
are displayed differently than the search results of other applications.
We broadly but reasonably construe “for each of said search results of
said search results screen, displaying a corresponding one of said search
results in the same different corresponding manner as said different
corresponding manner of said corresponding one of said different
applications” (claim 1) as requiring that search results of the same
application are displayed the same with respect to the noted “manner.”
Given the above claim constructions, we interpret the limitation-at-
hand as reading on any display system in which, for a particular display
attribute (e.g., grouping or formatting), the search results are displayed
differently for different applications (i.e., between applications) and the
same for the same applications (i.e., within applications).
Lueder discloses a search window that displays the results of a
standard electronic search (FF 2). The search window includes a tree with a
selectable first level that determines how the search result items are filtered
and a selectable second level that determines what subset of the filter items
is displayed (FF 3).
The search window of Lueder’s Fig. 4 (reproduced below) has filtered
the search result items by facet (as indicated by expansion of the first-level
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“facets” filter) and, more particularly, grouped the search result items by
facet (as indicated by the grouping of 5,540 “web pages” items and 1,503
“messages” items) (FF 4). In Fig. 4, only the selected group of “web pages”
items is displayed (as indicated by highlighting of the second-level “web
pages” subset) (id.). We find that, for the particular display attribute of
grouping, the search result items are displayed differently for different
applications (e.g., “web pages” items and “messages” items are displayed by
facet in different respective groups) and displayed the same for the same
applications (e.g., “web pages” items are displayed by facet in the same
group).

Lueder’s Fig. 4

The search window of Lueder’s Fig. 2 (reproduced below) has filtered
the search result items by creation date (as indicated by highlighting of the
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first-level “created” filter) (FF 5). In Fig. 2, the “web pages” items have a
page-like icon and a name with an http format (FF 6); and the “messages”
items have an envelope-like icon and a name with a subject line format (id.).
We find that, for the particular display attributes of icons and name formats,
the search result items are displayed differently for different applications
(e.g., “web pages” items and “messages” items have different respective
icons and formats); and the search result items are displayed the same for the
same applications (e.g., “web pages” items are displayed with the same icon
and format).
Lueder’s Fig. 2

Contrary to Appellants’ argument that Lueder “does not disclose or
suggest what might be displayed if one of the ‘plus signs’ for any of
‘Appointments’, ‘Contacts’ or ‘Messages’ might be selected” (App. Br. 8),
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an artisan would have understood that expanding/selecting any facet of
Lueder’s search window causes an application-specific display of search
result items in accordance with our above findings. More particularly, the
artisan would have understood that expanding/selecting the ‘Appointments’,
‘Contacts’ or ‘Messages’ facets causes a respective display of only search
items for that particular application (as discussed with reference to Lueder’s
Fig. 4); and that the displayed search items will have application-specific
icons and/or formatting (as discussed with reference to Lueder’s Fig. 2).
Appellants further argue that Lueder does not teach “components of a
handheld electronic device including Personal Information Management
information to be searched” (App. Br. 8). Appellants appear to be arguing
that Lueder’s system does not search PIM information of a handheld-device,
as claimed. However, the rejection does not rely on Lueder as suggesting a
search of a handheld-device’s PIM information. Rather, the rejection relies
on the combination of Schroeder in view of Miyakawa as suggesting this
feature (Ans. 30; see also Ans. 4-6).
The rejection specifically states that Schroeder in view of Miyakawa
suggests a search “in which Personal Information Management information
are searched in different applications and displayed on the screen of hand
held device” (id.); and that Lueder suggests a display “of search results in a
graphical user interface in which each search results belong to different
applications are grouped in different manners [sic]” (Ans. 30; see also Ans.
6-7). Appellants do not specify how the language “components of said
handheld electronic device including Personal Information Management
information to be searched” (claim 1) distinguishes over the relied on
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combination of Schroeder or Miyakawa. 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.”)
Nor do Appellants attack the combinability of Schroeder and
Miyakawa. Rather, Appellants only attack the combinability of Schroeder
and Miyakawa with Lueder, and do so by merely stating that “the Examiner
errs by not pointing out how Schroeder et al. and Miyakawa et al. might add
anything to Lueder et al.” (App. Br. 7). However, the Examiner states that
an artisan would have incorporated Lueder’s grouping technique into the
display method of Schroeder in view of Miyakawa in order to better
visualize, navigate, analyze, and manage the search results (Ans. 7).
Appellants present no evidence, and we find none of record, that this
proposed incorporation of Lueder’s grouping technique would have been
uniquely challenging or difficult for one of ordinary skill in the art. See
Leapfrog, 485 F.3d at 1162.
Accordingly, for the above reasons, we affirm the rejection of claim 1,
and dependent claims 2, 3, and 14-18 falling therewith, under 35 U.S.C. §
103(a) as being unpatentable over the combined teachings of Schroeder,
Miyakawa, and Lueder. As Appellants present similar arguments for
independent claim 27 (App. Br. 9), we also affirm the rejection of claim 27,
and dependent claim 32 falling therewith, under 35 U.S.C. § 103(a) as being
unpatentable over Schroeder, Miyakawa, and Lueder.
Claims 4-7, 10-13, 20-26, and 28-31
As Appellants do not provide separate arguments for claims 4-7, 10-
13, 20-26, and 28-31, those claims fall with claim 1. Accordingly, we affirm
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the rejections of: claims 4-7 and 29-31 under 35 U.S.C. § 103(a) as being
unpatentable over Schroeder, Miyakawa, Lueder, and Chaudhri; claims 10-
13 under 35 U.S.C. § 103(a) as being unpatentable over Schroeder,
Miyakawa, Lueder, and Siitonen; claims 20-22 under 35 U.S.C. § 103(a) as
being unpatentable over Schroeder, Miyakawa, Lueder, and Schmidt; claims
23 and 24 under 35 U.S.C. § 103(a) as being unpatentable over Schroeder,
Miyakawa, Lueder, Schmidt, and Schuetze; claims 25 and 26 under 35
U.S.C. § 103(a) as being unpatentable over Schroeder, Miyakawa, Lueder,
and Milic-Frayling; and claim 28 under 35 U.S.C. § 103(a) as being
unpatentable over Schroeder, Miyakawa, Lueder, and Lowles.

VI. CONCLUSIONS
(1) The Examiner did not err in concluding that claims 1-3, 14-18,
27, and 32 are unpatentable over Schroeder, Miyakawa, and Lueder.
(2) The Examiner did not err in concluding that claims 4-7 and 29-
31 are unpatentable over Schroeder, Miyakawa, Lueder, and Chaudhri.
(3) The Examiner did not err in concluding that claims 10-13 are
unpatentable over Schroeder, Miyakawa, Lueder, and Siitonen.
(4) The Examiner did not err in concluding that claims 20-22 are
unpatentable over Schroeder, Miyakawa, Lueder, and Schmidt.
(5) The Examiner did not err in concluding that claims 23 and 24
are unpatentable over Schroeder, Miyakawa, Lueder, Schmidt, and Schuetze.
(6) The Examiner did not err in concluding that claims 25 and 26
are unpatentable over Schroeder, Miyakawa, Lueder, and Milic-Frayling.
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(7) The Examiner did not err in concluding that claim 28 is
unpatentable over Schroeder, Miyakawa, Lueder, and Lowles.
(8) Claims 1-7, 10-18, and 20-32 are not patentable.

VII. DECISION
We affirm the Examiner’s rejections of claims 1-7, 10-18, and 20-32
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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