Ex Parte Hintermeister et al

Board of Patent Appeals and Interferences

Mar 28, 2012

10965187 (B.P.A.I. Mar. 28, 2012)

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.
10/965,187 10/14/2004 Gregory R. Hintermeister ROC920040020US1 5341
46797 7590 03/29/2012
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
BONSHOCK, DENNIS G
ART UNIT PAPER NUMBER
2142
MAIL DATE DELIVERY MODE
03/29/2012 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 GREGORY R. HINTERMEISTER
and TIMOTHY J. O’KEEFE
____________

Appeal 2009-014398
Application 10/965,187
Technology Center 2100
____________

Before KRISTEN L. DROESCH, DAVID M. KOHUT, and
BRUCE R. WINSOR, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 11 and 14-22, which constitute all the claims pending in this
application. Claims 1-10, 12, and 13 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellants’ “invention relates to a goal-based graphical user interface
for managing business solutions.” (Spec. ¶ [0001].) Claim 11, which is
illustrative of the invention, reads as follows:
11. A computer implemented method for managing one or
more goals utilizing a user interface, comprising:
displaying, in the user interface, a plurality of selectable
goal elements, each selectable goal element representing a user
goal for managing a computer system;
upon selection of a selectable goal element, displaying, in
the user interface, a plurality of building block elements ordered
in a predefined sequence of execution for achieving a goal
represented by the selected selectable goal element, the
plurality of building block elements representing a plurality of
tasks for achieving the selected goal;
displaying a status indicator with each selectable goal
element, each status indicator indicating a collective
performance status of the plurality of tasks for achieving a
respective goal; and
displaying a status text field along with each building
block element, each status text field describing a function
currently being performed by the building block element,
wherein the status text field displays a textual indicator of
whether the building block element is functioning correctly or
requires attention.
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Claims 11 and 14-22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Williams (US 2002/0054142 A1; May 9, 2002), Hatoun
(US 2006/0069605 A1; Mar. 30, 2006), and Brixius (US 2006/0004618 A1;
Jan. 5, 2006).
Rather than repeat the arguments here, we make reference to the
Briefs (App. Br. filed Dec. 17, 2008; Reply Br. filed June 3, 2009) and the
Answer (Ans. mailed Apr. 3, 2009) for the respective positions of
Appellants and the Examiner.

ISSUE
The dispositive issue presented by Appellants contentions is as
follows:
Does Williams teach or suggest “upon selection of a selectable goal
element, displaying, in the user interface, a plurality of building block
elements . . . the plurality of building block elements representing a plurality
of tasks for achieving the selected goal[,]” (hereinafter “the disputed
limitation”), as recited in claim 11?
1

ANALYSIS
The Examiner finds (Ans. 3-4) that Williams teaches (Williams ¶
[0025]; Figs. 3a, 3b) displaying selectable goal elements in display section
(i.e., context list box) 12 and further displaying the goals as parent goals in
display section (i.e., scoping pane) 14. The Examiner further finds that
Williams teaches that upon selection of a goal element a plurality of

1
Appellants’ arguments present additional issues. We do not reach the
additional issues as this issue is dispositive of appeal.

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categorically arranged tasks are displayed under the parent goal and that
additionally:
responsive to selection of a goal element from the display
section [12] a plurality of categorically arranged tasks (Create
Service, Assign Service, Modify Service, Create Service Group,
Performance Configuration, Message Configuration, etc.) under
the parent goal are displayed in a display section [14] of the
GUI, and additionally upon selection of a task further sub-tasks
(Template Tasks, Message Filtering, Message Present, etc.) can
be expanded for display in display section [14].
(Ans. 4 (brackets in original)). The Examiner appears to map the claimed
building block elements onto these task and/or subtasks (also referred to by
the Examiner as “functions”) taught by Williams (see Ans. 4, l. 17; 5, l. 13).
Appellants contend as follows:
While the Examiner may well be correct that the "Create
Service, Assign Service, Modify Service, Create Service Group,
Performance Configuration, Message Configuration, etc"
elements shown in [Williams’s] figure 3a show "a plurality of
categorically arranged tasks," this simply is not what is recited
by claim 1. The claim recites "building block elements ordered
in a predefined sequence of execution for achieving a goal
represented by the selected selectable goal element," nothing
about the "categorical" arrangement of the "Create Service,
Assign Service, Modify Service, Create Service Group,
Performance Configuration, Message Configuration, etc"
elements of this interface teach, show, or suggest the claimed
. . . "plurality of building block elements ordered in a
predefined sequence of execution for achieving a goal
represented by the selected selectable goal element," in general
or as claimed where the "the plurality of building block
elements representing a plurality of tasks for achieving the
selected goal." Instead, as demonstrated above, these elements
provided independent interfaces that can be selected as part of
the "service Definition Tasks" context (selected in context list
12).
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(App. Br. 14).
We first construe the phrase “building block elements” in claim 11.
We note that although the Examiner purports to construe the claim (Ans.
13), the Examiner does not explicitly construe the phrase “building block
elements.” We find that the ordinary meaning of the phrase “building block
elements,” as it would be understood by one of ordinary skill in the art, is
elements that are constituent parts of an entity, and from which the entity is
constructed. See MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 150 (10
th

Ed., 1990) (“building block (1846) n: a unit of construction or
composition.”) For example, the building block elements of a process are
the individual steps of the process, which together make up the process.
This construction is the broadest reasonable construction, see In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997), and is consistent with both the context
of the claim (“a plurality of building block elements ordered in a predefined
sequence of execution for achieving a goal represented by the selected
selectable goal element, the plurality of building block elements representing
a plurality of tasks for achieving the selected goal”) and with the
Specification (see Spec. ¶¶ [0011], [0030]).
In light of our claim construction we agree with Appellants that the
Examiner has erred in finding that Williams teaches the disputed limitation.
The Examiner is correct that the claimed selectable goal elements read on
Williams hierarchical listing of tasks displayed in scoping pane 14 when
“Modify Service” is selected in the context definition box 12 (Williams ¶
[0025]; Fig. 3a). However, one of ordinary skill in the art would have
understood Williams’s hierarchical listing of tasks (i.e., “selectable goal
elements) as a listing of tasks (or “goals”) increasing in specificity, rather
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than a listing of building blocks of those tasks. For example, in Williams’s
Figure 3a, “Message Configuration [Tasks]” is a more specific than “Service
Definition Tasks, “Message Filtering [Tasks]” is more specific than
“Message Configuration [Tasks],” and each of “Setup Filter,” “Modify
Filter,” and “Test Filter” is more specific than “Message Filtering [Tasks].”
Thus, Williams discloses “selectable goal elements” of increasing
specificity. We do not find any disclosure in the cited portions of Williams
of building blocks (i.e., constituent parts of the goal from which the goal is
constructed) that are tasks for achieving the selected goal.
The Examiner also states that Hatoun discloses the disputed element
(Ans. 5; see Hatoun ¶ [0087]; Fig. 7D). However, as with Williams, the
cited portions of Hatoun appear to teach displaying categories of goals such
as “Active Tasks” (Hatoun Fig. 7D) and more specific goals such as “Please
review JetBlue 777” (id.) (i.e., “selectable goal elements”), but does not
appear to teach displaying the tasks required to accomplish the selected goal
(i.e., “building block elements”).
As applied by the Examiner, Brixius does not remedy the deficiencies
of Williams and Hatoun. Ans. 5-6. Therefore, we conclude that the
Examiner has not established that the cited references teach the disputed
limitation. Therefore, we will not sustain the rejection of (1) claim 11; (2)
claim 21, which recites a limitation substantially the same as the disputed
limitation; and (3) claims 14-20 and 22, which depend from claims 11 and
21 respectively.

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CONCLUSION
On the record before us, we conclude that Appellants have shown
error in the Examiner’s rejection of claims 11 and 14-22 under 35 U.S.C.
§ 103(a) over Williams, Hatoun, and Brixius as applied by the Examiner.

ORDER
The decision of the Examiner to reject claims 11 and 14-22 under 35
U.S.C. § 103(a) is reversed.

REVERSED

kis