Ex Parte Cohen et al

Board of Patent Appeals and Interferences

Oct 27, 2009

10340563 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREW L. COHEN, BOB STACHEL, and STEVE FOLEY
___________

Appeal 2009-004782
Application 10/340,563
Technology Center 2100
____________

Decided: October 28, 2009
____________

Before JAMES D. THOMAS, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-17, 19, and 20. Claim 18 has been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

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STATEMENT OF THE CASE
INVENTION
The invention on appeal is directed generally to the field of
collaborative computing. More particularly, the invention relates to software
tools for improving collaborative working among a group of people working
together on a project or task involving a defined set of documents. (Spec. 1).

ILLUSTRATIVE CLAIM
1. A method implemented on a computer for improving
awareness of a status of a task, the method comprising:

storing a first set of data representing a plurality of users
involved in the task and a second set of data representing a
plurality of data objects involved in the task;

receiving task-related data representing activities
performed by each of the plurality of users involved in the task
on the plurality of data objects involved in the task;

at a first time displaying in a first region of a screen
display of at least one of the users involved in the task a list of
the plurality of users in association with an activity performed
by each of the users at or most recently to the first time;

at the first time displaying in a second region of the
screen display of the at least one of the users a list of the
plurality of data objects in association with an activity
performed upon each of the plurality of data objects at or most
recently to the first time;

and

allowing a user to initiate, through the list of users or
through the list of data objects, one or more collaboration tools.

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PRIOR ART
The Examiner relies upon the following references as evidence:
Smiga US 6,029,171 Feb. 22, 2000
Ouchi US 5,978,836 Nov. 2, 1999
Goodhand US 5,923,848 Jul. 13, 1999
Smith US 5,107,443 Apr. 21, 1992

THE REJECTIONS
The Examiner rejected claims 1-14, 16, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Goodhand and Smiga.
The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Goodhand, Smiga, and Ouchi.
The Examiner rejected claims 19 and 20 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Goodhand, Smiga, and Smith.

GROUPING OF CLAIMS
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1 and 17. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE(S)
Regarding representative claim 1, Appellants contend that the
Examiner’s proffered combination of Goodhand and Smiga does not teach
or suggest the last four steps of method claim 1, as follows (labeled for
convenience here as L1-L4):
[L1] receiving task-related data representing activities
performed by each of the plurality of users involved in the task
on the plurality of data objects involved in the task;

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[L2] at a first time displaying in a first region of a screen
display of at least one of the users involved in the task a list of
the plurality of users in association with an activity performed
by each of the users at or most recently to the first time;

[L3] at the first time displaying in a second region of the
screen display of the at least one of the users a list of the
plurality of data objects in association with an activity
performed upon each of the plurality of data objects at or most
recently to the first time;

and

[L4] allowing a user to initiate, through the list of users
or through the list of data objects, one or more collaboration
tools.

(App. Br. 4-8).
In response, the Examiner contends that each of the aforementioned
limitations L1-L4 is taught or suggested by the proffered combination of
Goodhand and Smiga (Ans. 14-20; see Examiner’s “Response to
Arguments”, sections A-D that correspond to limitations L1-L4,
respectively).
Issue(s): Have Appellants shown the Examiner erred in
finding that the combination of Goodhand and Smiga
teaches or suggests argued limitations L1-L4?
(Representative claim 1).

PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 419 (2007). To be nonobvious, an
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improvement must be “more than the predictable use of prior art elements
according to their established functions.” Id. at 417.
Invention or discovery is the requirement which constitutes the
foundation of the right to obtain a patent . . . unless more ingenuity
and skill were required in making or applying the said improvement
than are possessed by an ordinary mechanic acquainted with the
business, there is an absence of that degree of skill and ingenuity
which constitute the essential elements of every invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval
by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006). Therefore, we look to Appellants’ Briefs to show error in
the Examiner’s proffered prima facie case.

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF):
1. Smiga teaches “a natural language based information organization and
collaboration tool for a computer system.” (Col. 2, ll. 58-59).

ANALYSIS
We decide the question of whether Appellants have shown the
Examiner erred in finding that the combination of Goodhand and Smiga
teaches or suggests argued limitations L1-L4. (Representative claim 1).

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Based upon our review of the record before us, we find each of
Appellants’ arguments for patentability regarding limitations L1-L3 is
predicated on nonfunctional descriptive material. We note that functional
descriptive material consists of data structures or computer programs which
impart functionality when employed as a computer component. In contrast,
non-functional descriptive material refers to data content that does not
exhibit a functional interrelationship with the substrate and does not affect
the way the computing processes are performed. See MPEP § 2106.01.
Here, we find that the argued steps (computing processes) of
“receiving” [L1], “displaying in a first region” [L2], and “displaying in a
second region” [L3], are not changed or performed differently according to
the particular type of data that is received or displayed (see argued
limitation L1 – descriptive data representing “activities” and “data objects”,
see also argued limitation L2 – descriptive data representing a user list and
associated activities, and see also argued limitation L3 – descriptive data
representing a list of data objects and associated activities).
The content of such nonfunctional descriptive material is not entitled
to weight in the patentability analysis. In a precedential decision, an
expanded panel recently held that elements that do not affect the claimed
process are non-functional material and are merely descriptive. See Ex parte
Nehls, 88 USPQ2d 1883, 1887-1888 (BPAI 2008) (precedential) available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf.1

1 Cf. In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not
claim merely the information content of a memory. . . . Nor does he seek to
patent the content of information resident in a database.”). See also Ex parte
Curry, 84 USPQ2d 1272 (BPAI 2005) (nonprecedential) (Fed. Cir. Appeal
No. 2006-1003, aff’d Rule 36 Jun. 12, 2006); Manual of Patent Examining
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Because Appellants’ arguments concerning limitations L1-L3 would
require us to give weight to nonfunctional descriptive material, we find
Appellants have not met their burden of showing error in the Examiner’s
specific findings of fact. Thus, we find that receiving or displaying
particular types of data does not distinguish over the cited combination of
Goodhand and Smiga, because we give the particular types of data that are
received or displayed no patentable weight in our analysis.
Regarding the last argued limitation L4 (i.e., “allowing a user to
initiate, through the list of users or through the list of data objects, one or
more collaboration tools” - claim 1), Appellants aver that a parser, selectable
project, contacts, etc. are not collaboration tools (App. Br. 7, §2).
However, we find Appellants’ have not proffered any supported
definition for the claimed “collaboration tools” that provides notice to the
artisan of a departure from the plain, ordinary, and accustomed meaning for
the term. We note that claim terms are presumed to have the ordinary and
customary meanings attributed to them by those of ordinary skill in the art.
Sunrace Roots Enterprise Co. v. SRAM Corp., 336 F.3d 1298, 1302 (Fed.
Cir. 2003); Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294,
1298 (Fed. Cir. 2003) (“In the absence of an express intent to impart a novel
meaning to the claim terms, the words are presumed to take on the ordinary
and customary meanings attributed to them by those of ordinary skill in the
art.”).
Here, we find Smiga expressly teaches “a natural language based
information organization and collaboration tool for a computer system.” (FF
1, emphasis in original). Therefore, we find the evidence supports the

Procedure (MPEP) § 2106.01 (Eighth ed., Rev. 7, July 2008).
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Examiner’s factual findings and reasoning as articulated on pages 19 and 20
of the Brief.
Moreover, regarding each of aforementioned limitations L1-L4, the
record shows that Appellants have not rebutted any of the Examiner’s
responsive arguments by filing a Reply Brief.
Accordingly, we find Appellants have not met the requisite burden of
providing evidence or argument to show error in the Examiner’s legal
conclusion of obviousness for representative claim 1. Since Appellants have
not separately argued claims 2-16, 19, and 20, these claims fall with claim 1
from which they depend. See 37 C.F.R. § 41.37(c)(1)(vii).
Regarding independent claim 17, Appellants merely recite the
language of the claim and state that “claim 17 is allowable for the reasons
described above with reference to claim 1.” (App. Br. 9, §2). However, a
statement that merely points out what the claim recites will not be
considered as an argument for separate patentability of the claim. See 37
C.F.R. § 41.37(c)(1)(vii). Therefore, claim 17 falls with claim 1.

CONCLUSIONS
Based on the findings of facts and analysis above:
Appellants have not established the Examiner erred in rejecting claims
1-14, 16, and 17 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Goodhand and Smiga.
Appellants have not established the Examiner erred in rejecting claim
15 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Goodhand, Smiga, and Ouchi.
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Appellants have not established the Examiner erred in rejecting claims
claims 19 and 20 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Goodhand, Smiga, and Smith.

DECISION
We affirm the Examiner’s rejection of claims 1-17, 19, and 20 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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