Ex Parte Gurney et al

Board of Patent Appeals and Interferences

Sep 27, 2010

10335018 - (D) (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/335,018 12/31/2002 Daniel C. Gurney LOT920020043US1 (004) 5588
46321 7590 09/27/2010
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
PITARO, RYAN F
ART UNIT PAPER NUMBER
2174
MAIL DATE DELIVERY MODE
09/27/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL C. GURNEY and VINOD R. SERAPHIN
____________

Appeal 2009-009928
Application 10/335,018
Technology Center 2100
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
JAY P. LUCAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 10/335,018

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The Appellants appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1-3, 5, 7, 10, and 12. Claims 4, 6, 8, 9, 11, 13, 14, and 15
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and a device for
graphical user interface (GUI) and drop box control (Spec. 1).

The Illustrative Claims
Claims 1 and 7, the illustrative claims, read as follows:
1. An edit selection control article of manufacture comprising:
a combo box coupled to a list of entries of full textual length;

an edit box coupled to said combo box within the edit selection
control and configured to display a selected one of said entries;
and,

list management logic coupled to said edit box and programmed
to accept through said edit box as an alternative selection to
said list of entries, a manually specified entry;

the edit selection control having a structure defined by a
dynamic markup language for use in a markup language
document; and,

selection transformation logic coupled to said edit box and
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programmed to transform said selected one of said entries into a
hidden value and to return the computed value to a calling
application based upon the selected one of the entries.

7. A method of selecting an entry in an edit selection control,
the method comprising the steps of:

receiving focus in the edit selection control;

detecting a user request to drop down a list of entries in the edit
selection control;

responsive to a user selection of one of said entries, displaying
an abbreviated version of said user selection in an editable text
field;

permitting manual entry of a selection in said editable text field
in lieu of selecting one of said entries;

transforming said selection into a hidden value;

returning said hidden value to a calling programmatic entity;
and,

adding said manual entry to said list of entries.

The References
The Examiner relies on the following references as evidence:
Google “Google”, Dec. 17, 2001 Internet: www.google.com
URL: Http://web.archive.org/web/*/http://google.com (hereafter
Google).

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Google Toolbar, March 2001, pp. 1010
URL:Http://web.archive.org/web/20010202030300/http://toolbar.goo
gle.com (hereafter Toolbar).

Vickery “CCombobox with Support for History”, Oct. 10, 2002 pp. 1-
6 URL: Http://www.codeguru.com/cpp/controls
/combobox/article.php/c4945/ (hereafter Vickery).

yCode Combo Box, “Screen Capture Image” URL:
http://web.archive/web/20021129063058/http://www.ycode.com
(hereafter yCode)

The Rejections
The following rejections are before us for review:
Claims 7, 10, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Google, Toolbar, and
Vickery.
Claims 1-3, and 5 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Google, Toolbar, yCode,
and Vickery.

II. ISSUES
Has the Examiner erred in finding that the combination of Google,
Toolbar, yCode, and Vickery teaches or fairly suggests “transform said
selected one of said entries into a hidden value and to return the computed
value to a calling application”, as recited in independent claim 1 or
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“transforming said selection into a hidden value; returning said hidden value
to a calling programmatic entity”, as recited in independent claim 7?

III. PRINCIPLES OF LAW
Claim Interpretation
The claim construction analysis begins with the words of the claim.
See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996). Absent an express intent to impart a novel meaning to a claim term,
the words take on the ordinary and customary meanings attributed to them
by those of ordinary skill in the art. Brookhill-Wilk 1, LLC. v. Intuitive
Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003).

Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (1) the scope and content of the prior art, (2) the
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the pertinent art, and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).

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IV. FINDING OF FACT
The following finding of fact (FFs) is supported by a preponderance
of the evidence.
Vickery
1. Vickery discloses a History Combo class that supports for keys
including reading from key strokes and saving to the registry (page 2).
Vickery also discloses that a user can type an item into the combo, and then
click “add to list”, and next time when the user runs the application, the item
will appear in the history list (Fig. 3).

V. ANALYSIS
The Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of a reasoned
conclusion of unpatentability in the Examiner’s Answer. Therefore, we look
to the Appellants’ Brief to show error in the proffered reasoned conclusion.
Id.
The Common Feature in Claims
Independent claim 1, recites, inter alia, “transform said selected one
of said entries into a hidden value and to return the computed value to a
calling application”. Independent claims 7 and 12, recite, inter alia,
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“transforming said selection into a hidden value; returning said hidden value
to a calling programmatic entity” contain these similar limitations. The
recited limitations, even though different in wording, have the same scope.
35 U.S.C. § 103(a) rejections
With respect to independent claims 1, 7, and 12, the Appellants
contend that Vickery fails to disclose the feature of transforming an entry to
a hidden value (App. Br. 7 and 9). According to the Appellants, the logic
operator “and” is a mathematical function, not a value (Id. 7), and the
“Examiner has mapped ‘hidden value’ not to a ‘value that is hidden’, but to
an ‘operator that is hidden’.” (Reply Br. 4).
The Examiner states that Vickery teaches the argued limitation in Fig.
3 (Ans. 4, 6 and 9). The Examiner also states that the “and” operator could
be read as a hidden value because “the Examiner holds the position that
value as in computer science, is a sequence of bits that is interpreted
according to same data type . . . [f]or instance, the value could be an integer
or floating point value, or a string.” Id., at 8-9.
We disagree with the Examiner’s statements. We find that the
paragraph of the Vickery reference relied upon by the Examiner only
discusses recording an entry by a user to a history list displayed later to the
user (FF 1). We do not find and the Examiner does not indicate where there
is any teaching in Vickery for transforming an entry, let alone transforming
an entry into a “hidden value.” One ordinary skill in the computer arts
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would not recognize that a logical operator is a value as the Examiner
argued. Even if assuming the logical operator “and” is a kind of value, the
logical operator is clearly not an entry by a user, or transforming this entry to
a hidden value, especially in view of the specification.
Because we agree with at least one of the Appellants’ contentions, we
find that the Examiner has not made a requisite showing of obviousness as
required to teach or fairly suggest the invention as recited in claims 1, 7, and
12 by the combination of Google, Toolbar, yCode, and Vickery. The
rejection of the dependent claims 2, 3, 5, and 10 contains the same
deficiency. The Appellants, thus, have demonstrated error in the Examiner’s
reasoned conclusion for obviousness of the subject matter of claims 1-3, 5, 7,
10, and 12.
We, therefore, cannot sustain the rejection of claims 1-3, 5, 7, 10, and
12 under 35 U.S.C. § 103.

VI. CONCLUSION
We conclude that the Examiner erred by finding that the combination
of Google, Toolbar, yCode, and Vickery teaches or fairly suggests
“transform said selected one of said entries into a hidden value and to return
the computed value to a calling application”, as recited in independent claim
1 or “transforming said selection into a hidden value; returning said hidden
value to a calling programmatic entity”, as recited in independent claim 7.

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VII. ORDER
We reverse the obviousness rejections of claims 1-3, 5, 7, 10, and 12
under 35 U.S.C. § 103(a).

REVERSED

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CAREY, RODREGUEZ, GREENBURG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPOORATE CIRCLE
SUITE 3020
BOCA RATON, FL 33487