Ex Parte Kulp et al

Board of Patent Appeals and Interferences

Nov 30, 2010

10720804 (B.P.A.I. Nov. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD L. KULP, GILI MENDEL, JEFFREY D. MYERS,
REBECCA J. SCHALLER, GUNTURI SRIMANTH, PETER A.
WALKER, and JOSEPH R. WINCHESTER
____________

Appeal 2009-005388
Application 10/720,804
Technology Center 2100
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and JEAN R.
HOMERE, 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.

Appeal 2009-005388
Application 10/720,804

2
The Appellants appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1-27, 30 and 32. The claims 28-29 and 31 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 apparatus for
selectively displaying overlapping graphic objects in a data processing
system (Spec. 3).
The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. A method for performing an operation on a graphic object in
a display of overlapping graphic objects in a data processing
system, the method comprising the steps of:
storing a model of a graphic object, wherein said model
includes an indication of whether said graphic object is a parent
or child of another graphic object;
displaying a plurality of overlapping graphic objects to a user;
detecting a selection by the user of a graphics editing operation
to be performed on a graphic object;
detecting a position of a pointer with respect to a display of said
plurality of overlapping graphic objects;
Appeal 2009-005388
Application 10/720,804

3
displaying to a user a list of overlapping graphic objects which
coincide with said pointer position and on which said graphics
editing operation can be performed;
detecting a selection by the user of one graphic object of said
indicated plurality of overlapping graphic objects as a target
graphic object without the user changing said pointer position
to make said selection;
performing said graphics editing operation on said target
graphic object; and
making said target graphic object visible during performance of
the graphics editing operation on said target graphic object.
The References
The Examiner relies on the following references as evidence:
Bates US 5,377,314 Dec. 27, 1994
Brown US 5,627,959 May 6, 1997
Frank US 5,651,107 Jul. 22, 1997
Hama US 5,754,177 May 19, 1998
Keren US 6,335,733 B1 Jan. 1, 2002
Applicant’s Admitted Prior Art (hereinafter “AAPA”)

The Rejections
The following rejections are before us for review:
Claims 1-3, 5-10, 15-17, 19-24, 30 and 32 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Hama,
Brown, and AAPA.
Claims 4 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hama, Brown, AAPA, and Keren.
Appeal 2009-005388
Application 10/720,804

4
Claims 11 and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination Hama, Brown, Bates, and
AAPA.
Claims 12-14 and 26-27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination Hama, Brown, Bates, Frank
and AAPA.

II. ISSUES
Has the Examiner erred in finding that the combination of Hama,
Brown, and AAPA teaches or fairly suggests “detecting a selection by
the user of one graphic object of said indicated plurality of overlapping
graphic objects as a target graphic object without the user changing said
pointer position to make said selection”, as recited in independent claim
1?

III. PRINCIPLES OF LAW
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
Appeal 2009-005388
Application 10/720,804

5
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Hama
1. Hama discloses a means to display a multi-level object by utilizing a
pointing device to select different levels of objects (col. 6 ll. 35-67, Figs. 5-
8).

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, “detecting a selection by the
user of one graphic object of said indicated plurality of overlapping graphic
Appeal 2009-005388
Application 10/720,804

6
objects as a target graphic object without the user changing said pointer
position to make said selection”. Independent claim 16 contains similar
limitations.
35 U.S.C. § 103(a) rejections
With respect to independent claim 1, the Appellants contend that
neither Hama nor Brown (nor AAPA) discloses the disputed feature (App.
Br. 7). In particular, Appellants argue that “Hama relies on moving a
pointer to make selections of objects, which teaches away from Appellant’s
claimed invention.” Id.
We agree with the Appellants’ contention. We find the Examiner
admitted that Hama does not teach the disputed feature (Ans. 11) because
Hama moves a pointer to select an object (FF 1). Whether the Examiner
relies on an express or an implicit showing, the Examiner must provide
particular findings related thereto. See In re Dembiczak, 175 F.3d at 999.
Here, the Examiner merely asserts the disputed feature was well known, but
fails to provide any particular findings related to the assertion. The
Examiner, in addition, fails to articulate how the well known knowledge is
to be used to replace the moving pointer of Hama to render the claimed
feature.
Because we agree with at least one of the Appellants’ contentions,
we, therefore, 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 and 16 by the combination of Hama, Brown, and
Appeal 2009-005388
Application 10/720,804

7
AAPA. The rejection of the dependent claims 2-15, 17-27, 30, and 32
contains the same deficiency. The Appellants, thus, have demonstrated
error in the Examiner’s prima facie case for obviousness of the subject
matter of claims 1-27, 30, and 32.
We, therefore, cannot sustain the rejection of claims 1-27, 30, and 32
under 35 U.S.C. § 103.

VI. CONCLUSION
We conclude that the Examiner erred by finding that that the
combination of Hama, Brown, and AAPA teaches or fairly suggests
“detecting a selection by the user of one graphic object of said indicated
plurality of overlapping graphic objects as a target graphic object without the
user changing said pointer position to make said selection”, as recited in
independent claim 1.

VII. ORDER
We reverse the obviousness rejections of claims 1-27, 30, and 32
under 35 U.S.C. § 103(a).

REVERSED

Appeal 2009-005388
Application 10/720,804

8
tkl

IBM CORPORATION
3039 CORNWALLIS RD.
DEPT. T81/B503, PO BOX 12195
RESEARCH TRIANGLE PARK, NC 27709