Ex Parte Kern

Patent Trial and Appeal Board

Mar 10, 2014

11351397 (P.T.A.B. Mar. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte THOMAS KERN
__________

Appeal 2012-000129
Application 11/351,397
Technology Center 2100
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
method, system, and program for providing to a user a context menu with
entries representing relationships. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Appellant identifies the Real Party in Interest as SAP AG (see App. Br. 2).
Appeal 2012-000129
Application 11/351,397

2 

Statement of the Case
Background
The Specification teaches, in the context of a computer user interface,
that in “case an activity requires more than one input it is convenient to
support the user by providing additional information to him” (Spec. 3 ¶
0005). “One way to support the user executing an activity is provided by a
context menu. . . . The context menu may have . . . entries of functions . . .
The user may select one of the listed functions and the selected function is
executed for the selected object” (Spec. 3 ¶ 0006).
The Claims
Claims 1-19 are on appeal. Claim 1 is representative and reads as
follows:
1. A method for providing to a user a context menu with
entries representing relationships, wherein the entries are
selectable by the user to relate a plurality of objects selected
from a set of objects, the method comprising:
receiving a first identification of a first selected object
from the set of objects;
receiving a second identification of a second selected
object from the set of objects;
identifying object types of the selected objects in a
plurality of object types;
determining one or more relationship types requiring
at least one object of the object type of the first selected
object and at least one object of the object type of the second
selected object as input in order to be created as a
relationship between objects; and
generating for the context menu an entry for creating a
relationship of the one or more relationship types, wherein
the entry is selectable by the user to create the relationship
between the selected objects, and wherein the relationship
changes an attribute of each object.

Appeal 2012-000129
Application 11/351,397

3 

The Issues
A. The Examiner rejected claims 1, 14, and 19 under 35 U.S.C. § 103(a)
as obvious over Malamud,2 Mullins,3 and Hallisey4 (Ans. 4-14).
B. The Examiner rejected claims 2-7 and 15-17 under 35 U.S.C. § 103(a)
as obvious over Malamud, Mullins, Hallisey, and McKnight5 (Ans. 14-23).
C. The Examiner rejected claims 8, 9, and 18 under 35 U.S.C. § 103(a)
as obvious over Malamud, Mullins, Hallisey, and Daudenarde6 (Ans. 23-27).
D. The Examiner rejected claims 10-13 under 35 U.S.C. § 103(a) as
obvious over Malamud, Mullins, Hallisey, and Carlucci7 (Ans. 27-30).
Because all of these rejections turn on the same issue, the absence of
any reason to combine the Malamud, Mullins, and Hallisey, we will consider
these rejections together.
The Examiner relies upon the combination of Malamud, Mullins, and
Hallisey to teach the elements of the claims. In combining Malamud and
Mullins to address claim 1, the reason given by the Examiner is that “[o]ne
would therefor[e] be motivated to combine these teachings as in doing so
would create this method for providing a context menu with relationships
where the relationships relate selected objects” (Ans. 7). The Examiner then
further relies upon Hallisey, with the reason to combine being that:
one of ordinary skill in the art of implementing a method of
providing a context menu with relationships where the
relationships relate selected objects would include
generating for the context menu an entry for creating a

2 Malamud et al., US 5,664,133, issued Sep. 2, 1997.
3 Mullins, W., US 2004/0181542 A1, published Sep. 16, 2004.
4 Hallisey et al., US 2005/0050471 A1, published Mar. 3, 2005.
5 McKnight et al., US 7,240,072 B2, issued Jul. 3, 2007.
6 Daudenarde, J., US 5,995,973, issued Nov. 30, 1999.
7 Carlucci et al., US 2004/0098151 A1, published May 20, 2004. 
Appeal 2012-000129
Application 11/351,397

4 

relationship of the one or more relationship types, wherein
the entry is selectable by the user to create the relationship
between the selected objects, and wherein the relationship
changes an attribute of each object in order to utilize a
context menu to define groupings of related objects such that
[the] objects are accessible by user defined groupings.

(Ans. 8-9).
Appellants contend that “even if it is assumed, arguendo, that the
references are related, the Final Office Action has failed to provide any
credible rationale for making the combination that does not draw from
Appellant’s subject matter” (App. Br. 15-16). Appellants contend that “no
person of ordinary skill in the art would have selected the cited portions of
these references and thought to combine them in the manner suggested
within the Final Office Action” (App. Br. 16). Appellants contend that:
only the Malamud reference actually includes any discussion
of context menus, but fails to teach Appellant’s claimed use
of context menus. The Mullins reference discusses systems,
methods, and software creating or maintaining distributed
transparent persistence of complex data objects, but includes
no discussion of user interfaces or mechanisms for creating
relationships between objects. Mullins is not a reference a
programmer of user interface functions is likely to consult.
Finally, Hallisey does discuss graphical user interfaces, but
fails to discuss creation of a relationship between objects via
a context menu.

(Ans. 16).
We find that Appellants have the better position. Not only does the
Examiner fail to provide a reason to combine the references, but the
Examiner does not appear to rely upon any of the seven rationales found in
the MPEP to support a conclusion of obviousness (see MPEP § 2141(III)).
Appeal 2012-000129
Application 11/351,397

5 

“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”’ KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Here, the Examiner has provided neither articulated reasoning nor any
rational underpinning to combine Malamud, Mullins, and Hallisey. Even in
the Examiner’s response to Appellants’ arguments, no clear reasoning
emerges. The Examiner simply states that “motivation to combine the
references comes from at least the references pertaining to the maintenance
of relationships between data objects in a system” (Ans. 32). This is not a
reason, but rather a conclusory statement. We are, therefore, constrained to
reverse these obviousness rejections as lacking any clear reason to combine
the references.

SUMMARY
In summary, we reverse the rejection of claims 1, 14, and 19 under 35
U.S.C. § 103(a) as obvious over Malamud, Mullins, and Hallisey.
We reverse the rejection of claims 2-7 and 15-17 under 35 U.S.C.
§ 103(a) as obvious over Malamud, Mullins, Hallisey, and McKnight.
We reverse the rejection of claims 8, 9, and 18 under 35 U.S.C.
§ 103(a) as obvious over Malamud, Mullins, Hallisey, and Daudenarde.

Appeal 2012-000129
Application 11/351,397

6 

We reverse the rejection of claims 10-13 under 35 U.S.C. § 103(a) as
obvious over Malamud, Mullins, Hallisey, and Carlucci.

REVERSED

lp