Ex Parte Connally et al

Patent Trial and Appeal Board

Jul 22, 2013

11740792 (P.T.A.B. Jul. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CARLI CONNALLY, KRISTIN PETERSEN,
and ROBERT S. KOLMAN
____________

Appeal 2011-003876
Application 11/740,792
Technology Center 2100
____________

Before DONALD E. ADAMS, LORA M. GREEN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
1

This appeal under 35 U.S.C. § 134 involves claims 1-22 (App. Br. 4).
Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The claims are directed to a computer-implemented method and an
apparatus. Claim 1 is representative and is reproduced in the Claims
Appendix of Appellants‟ Brief.

1
The Real Party in Interest is Verigy (Singapore) Pte. Ltd. (App. Br. 2).
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Claims 1-9 and 13-22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kolman.
2

Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kolman and Purtell.
3

ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds that Kolman suggests a computer-implemented
method and apparatus that displays a plurality of test data entries via a
graphical user interface (GUI) and “provid[es], via the GUI, a user-
selectable mechanism that, when selected, causes additional test data related
to a particular one of the test data entries to be displayed via the GUI” (Ans.
4 and 7).
FF 2. Kolman suggests “[a] graphical user interface (GUI) of a report
format editor for circuit test displays a number of user-selectable
representations of circuit test data” (Kolman, Abstract; Cf. Ans. 4 (Kolman
suggests a computer-implemented method and apparatus that displays a
plurality of test data entries via a graphical user interface (GUI) and
“provid[es], via the GUI, a user-selectable mechanism that, when selected,
causes additional test data related to a particular one of the test data entries
to be displayed via the GUI”); see also Ans. 7).

2
Kolman, US 2005/0222797 A1, published October 6, 2005.

3
Purtell et al., US 2003/0093737 A1, published May 15, 2003.

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FF 3. Kolman suggests that
[T]he report format editor … may comprise code that enables
placed representations of circuit test data … to be graphically
resized within the ASCII report format…. This may be
accomplished, for example, by providing the circuit test data …
with graphically selectable “handles” (e.g., persistently
displayed handles or hover (pop-up) handles). In one
embodiment, selection of a placed representation of circuit test
data … also causes the GUI … to provide an option to specify a
data format for the selected representation. The option may
take the form of a fill-in field (on a menu bar, for example) that
allows a user to specify a desired width of circuit test data, a
desired number of significant digits of the data item, or one of
a[] number of data formats for data item (e.g., integer, text, or
scientific notation).

(Kolman 2: ¶ [0015] (emphasis added); Cf. Ans. 4 (Kolman suggests that the
display of additional test data “may be accomplished … with graphically
selectable „handles‟ … to provide an option to specify a data format for the
selected representation … that allows a user to specify a desired width of
circuit test data [and/or] a desired number of significant digits of the data
item” (emphasis removed)); see also Ans. 8 and 15).
FF 4. Appellants disclose that
data items that can be easily conformed to a common format,
such as a table, can be displayed as part of the test data entries;
and data items that are pictorial or verbose, or that otherwise
require display in a non-standard format, can be displayed as
part of the "additional data". The method 1 00 also enables the
display of additional data that is related to a particular one (Le.,
an individual one) of the test data entries.

(Spec. 5: ¶ 12.)
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FF 5. Examiner finds that Kolman fails to suggest that “the test data entries
comprise vector data” and relies on Purtell to make up for this deficiency
(Ans. 11).
ANALYSIS
Based on Kolman, Examiner concludes that, at the time Appellants‟
invention was made, it would have been prima facie obvious to include the
features of Kolman‟s different embodiments into a single computer-
implemented method or apparatus (Ans. 4). We are not persuaded.
Independent claims 1 and 13 require, inter alia, that at least one of the
test data entries is provided, via the GUI, with a user-selectable mechanism
that, when selected, causes additional test data related to a particular one of
the test data entries to be displayed via the GUI (see Claims 1 and 13). As
Appellants explain, the user‟s selection of Kolman‟s handle “does not cause
„additional data related to a particular [test data entry] to be displayed‟.
Instead, the handles only enable a user to define the physical areas where
data will appear when the report format 312 is ultimately used” (App. Br. 10
(alteration original); Cf. FF 4). Stated differently, “a data format used in a
generic report format, including an option to specify additional significant
digits that are displayed when a report format is ultimately used, does not
cause „additional data related to a particular [test data entry] to be
displayed‟” (id. at 11 (emphasis and alteration original); see also FF 4).
We are not persuaded by Examiner‟s assertion “that by specifying the
format of the selected representation implies that additional related
information will be displayed where a number of significant digits [or text
versus integer] can reveal more information related to circuit test data …
than originally displayed” (Ans. 15). Examiner failed to explain how the
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number of significant digits to which a particular number is carried out or
the representation of data in text versus integer corresponds to “additional
test data related to a particular one of the test data entries to be displayed via
the GUI” as that term is used in Appellants‟ Specification and claims (see FF
4).
Examiner failed to establish that Purtell makes up for the foregoing
deficiency in Kolman (see FF 5).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 1-9 and 13-22 under 35 U.S.C. § 103(a) as
unpatentable over Kolman is reversed.
The rejection of claims 10-12 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kolman and Purtell is reversed.

REVERSED

cdc