Ex Parte Grainger

Board of Patent Appeals and Interferences

Apr 29, 2010

09919764 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte JEFFRY J. GRAINGER 8
____________________ 9
10
Appeal 2008-005054 11
Application 09/919,764 12
Technology Center 2100 13
____________________ 14
15
Decided: April 30, 2010 16
____________________ 17
18
19
Before: ALLEN R. MACDONALD, Vice Chief Administrative Patent 20
Judge, MURRIEL E. CRAWFORD, and JOSEPH A. FISCHETTI, 21
Administrative Patent Judges. 22
23
CRAWFORD, Administrative Patent Judge. 24
25
26
DECISION ON APPEAL27
Appeal 2008-005054
Application 09/919,764

2
STATEMENT OF THE CASE 1
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1 to 38. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 3
Appellant invented a graphical user interface used to access 4
documents and other information that is stored electronically and associated 5
with a selected patent application (Spec. 1, para. [04]). 6
Claim 1 under appeal reads as follows: 7
1. A computer graphical user interface that 8
provides access to information pertaining to a 9
patent application, said graphical user interface 10
comprising: 11
a first display section in which is displayed a 12
plurality of first file links selectable by said user, 13
each of said first file links providing access to a 14
patent document that was filed in or sent from a 15
patent office and that is stored on a computer-16
readable medium in an image file format, wherein 17
when one of said first file links is selected an 18
associated underlying resource is automatically 19
returned; and 20
a second display section in which is 21
displayed a plurality of second file links selectable 22
by said user, each of said second file links 23
providing access to a patent file that is associated 24
with an application program and stored on a 25
computer-readable medium; 26
wherein said patent documents and said 27
patent files accessible from said first and second 28
display sections all pertain to said patent 29
application. 30
Appeal 2008-005054
Application 09/919,764

3
The prior art relied upon by the Examiner in rejecting the claims on 1
appeal is: 2
Rivette US 6,499,026 B1 Dec. 24, 2002 3
The Examiner rejected claims 1 to 38 under 35 U.S.C. § 102(e) 4
as being anticipated by Rivette. 5
The Examiner rejected claims 12, 19, 22, and 30 under 35 U.S.C. § 6
103(a) as being unpatentable over Rivette. 7
8
ISSUE 9
Did the Examiner err in finding that Rivette discloses a graphical user 10
interface having a first display having a first link to access a patent 11
document and second display having a second link to access a patent file 12
wherein the patent document and the patent file pertain to the same patent 13
application? 14
15
FINDINGS OF FACT 16
The Appellant’s Specification defines the term “‘file link’” as 17
something selectable by a user to access an underlying document (Spec. 11, 18
para. [37]). 19
Rivette discloses a graphical user interface having a first display 20
11704 called the group pane, a second display 11706 called the document 21
pane, and a third display 11708 called the notes pane (col. 114, ll. 6 to 12, 22
Fig. 117). A group hierarchy is depicted in the group pane 11704 and 23
includes a link to select a member of the group (col. 115, 1-7). The 24
documents pane includes user defined links (col.124, ll. 48-76, col.125, ll. 25
1-7). The notes pane, in addition to the linkage of notes to portions of 26
Appeal 2008-005054
Application 09/919,764

4
documents, also includes hierarchically linkages e.g., a note may be a child 1
note of any number of parent notes, and may have any number of child notes 2
(col. 26, ll. 61-65). 3
The selected member is displayed in the documents pane (col. 114, 4
ll. 61 to 66, Fig. 133). The notes panel displays a document selected in the 5
documents panel (col. 114, ll. 47 to 48). A user of the Rivette system can 6
create a new group in the group hierarchy (col. 116, ll. 44 to 46, Fig. 119). 7
The created new group is a hierarchical child of a group that has been 8
selected in the group display 11704 (col. 116, ll. 44 to 49). As such, Rivette 9
discloses that a new group can be created by selecting the repository group 10
in display 11704 and creating a new group as a child of the repository group. 11
With the flexibility disclosed in Rivette, a user can create a new group which 12
is a patent document that includes documents related to a particular patent 13
application filed in or sent to a patent office. A patent file may be added to 14
this new group (col. 118, ll. 31 to 44). As such, the new group is a patent 15
document related to a particular application that includes a patent file. 16
Therefore, the patent document group can be selected in the group display 17
11704 and the patent file displayed in the document display 11706. A 18
document in the document display can then be selected and displayed in the 19
notes display 11708. Each of these displays pertains to the particular patent 20
application. Rivette discloses that a patent can be displayed in image or text 21
format (col. 115, ll. 8 to 16). 22
23
PRINCIPLES OF LAW 24
A prior art apparatus having the same structure as a claimed apparatus 25
renders a claimed apparatus unpatentable under § 102 as long as it is capable 26
Appeal 2008-005054
Application 09/919,764

5
of performing the claimed process or function. In re Yanush, 477 F.2d 958, 1
959 (CCPA 1973); Ex Parte Masham, 2 USPQ2d 1647, 1647 (BPAI 1987). 2
Nonfunctional descriptive material cannot lend patentability to an 3
invention that would have otherwise been anticipated by the prior art. In re 4
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 5
1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally 6
related to the substrate, the descriptive material will not distinguish the 7
invention from the prior art in terms of patentability). 8
9
ANALYSIS 10
Anticipation 11
We initially note that as the rejection is based on 35 U.S.C § 102(e), it 12
is only necessary that the Rivette graphical display function as claimed 13
without deference to the content of the data being displayed. In this regard, 14
we find that the limitations of the independent claims are met by Rivette. 15
Claim 1 requires 16
a first display section in which is displayed a 17
plurality of first file links selectable by said user, 18
each of said first file links providing access to a 19
patent document . . . ; and 20
a second display section in which is 21
displayed a plurality of second file links selectable 22
by said user, each of said second file links 23
providing access to a patent file . . . . 24
(Emphasis added). 25
As found supra, in Rivette, each of the group pane, documents pane 26
and notes pane include linkages, with at least the group and the notes panes 27
including hierarchically linkages. We thus proceed with the understanding 28
Appeal 2008-005054
Application 09/919,764

6
that except for the particularities of the content of the data being handled by 1
the Rivette system, Rivette meets the structure of the independent claims. 2
Accordingly, we are not persuaded that the Examiner erred by the 3
Appellant’s argument that the claimed subject matter relates to a single 4
patent and the Rivette invention relates to a group of patents because the 5
Rivette system is capable of being configured so as to relate to a single 6
patent. e.g., the documents pane includes user defined links. 7
We are not persuaded of error on the part of the Examiner by 8
Appellant’s argument that Rivette does not disclose a first display with a 9
plurality of links and a second display with a plurality of links. Rivette 10
discloses and depicts in Figure 133 a group panel 11704 which has a 11
plurality of folders that can be selected by a user to access underlying 12
documents and, as such, the group panel 11704 of Rivette does disclose a 13
plurality of file links. Rivette also discloses that a document can be selected 14
in the documents panel to access underlying documents which may be 15
displayed in the notes panel. 16
We are not persuaded of error on the part of the Examiner by 17
Appellant’s argument that Rivette does not disclose a graphical user 18
interface having a first display having a fist link to access a patent document 19
and second display having a second link to access a patent file wherein the 20
patent document and the patent file pertain to the same patent application. 21
In this regard, we agree with the Examiner that the Rivette system has the 22
flexibility to create and display a link to a patent document in the group 23
display. The document display in Rivette is also capable of displaying a 24
plurality of file links wherein the patent document and the patent file pertain 25
Appeal 2008-005054
Application 09/919,764

7
to the same patent application. This is so because Rivette teaches that a user 1
can customize the displays by creating a new group and adding a document 2
to the group. 3
We are not persuaded of error by the Examiner by Appellant’s 4
argument that Rivette does not disclose a patent file associated with an 5
application program because we agree with the Examiner that the ability to 6
display a document as text rather than just as an image in the Rivette 7
disclosure is a disclosure that the document is associated with an application 8
program. 9
With respect to claims 13 and 20, 32, and 33, we agree with the 10
Examiner that because the Rivette system can be customized, it is capable of 11
displaying correspondence information in the notes display including 12
correspondence a user were merely have to add whatever correspondence 13
desired to the a document displayed in the documents panel. 14
Notwithstanding, as we set forth initially, the recitations in the claims 15
regarding the type of information displayed in the first, second, and third 16
display can not patentably distinguish the subject matter of the claims 17
because the display is not affected by being, specifically patent documents, 18
patent files, or correspondence. Therefore, in our view the type of 19
information displayed is merely nonfunctional descriptive matter and as such 20
is not patentably consequential. 21
In view of the foregoing, we will sustain the Examiner’s rejection of 22
the claims under 35 U.S.C. § 102(e). 23
Appeal 2008-005054
Application 09/919,764

8
Obviousness 1
We will also affirm the Examiner’s rejection of claims 12, 19, 22, and 2
30 under 35 U.S.C. § 103(a) because the Appellant relies on the arguments 3
made in response to the anticipation rejection in addressing this rejection 4
which we found unpersuasive. In addition, we have sustained the rejection 5
of claims 12, 19, 22, and 30 under 35 U.S.C. § 102(e) and anticipation is the 6
epitome of obviousness. Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 7
1984). See also In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982); In re 8
Pearson, 494 F.2d 1399, 1402 (CCPA 1974). 9
10
CONCLUSION OF LAW 11
On the record before us we conclude that the Examiner did not err in 12
rejecting the claims under 35 U.S.C. §§ 102(e) and 103(a). 13
14
DECISION 15
The Examiner's rejection of claims is AFFIRMED. 16
No time period for taking any subsequent action in connection with 17
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 18
§ 1.136(a)(1)(iv) (2007). 19
20
AFFIRMED 21
Appeal 2008-005054
Application 09/919,764

9
hh 1
2
3
4
TOWNSEND AND TOWNSEND AND CREW, LLP 5
TWO EMBARCADERO CENTER 6
EIGHTH FLOOR 7
SAN FRANCISCO, CA 94111-3834 8