Ex Parte Marum et al

Patent Trial and Appeal Board

Oct 31, 2016

13159682 (P.T.A.B. Oct. 31, 2016)

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.
13/159,682 06/14/2011 Matthew Gordon Marum CAM920110015US1_063 1931
51835 7590 11/01/2016
IBM Lotus & Rational SW
c/o Schmeiser, Olsen & Watts LLP
33 Boston Post Road West
Suite 410
Marlborough, MA 01752
EXAMINER
CASANOVA, JORGE A
ART UNIT PAPER NUMBER
2159
MAIL DATE DELIVERY MODE
11/01/2016 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MATTHEW GORDON MARUM,
SAMUEL GEORGE PADGETT,
STEVEN KEITH SPEICHER, and MICHAEL JOHN TABB
____________________

Appeal 2016-000164
Application 13/159,682
Technology Center 2100
____________________

Before MAHSHID D. SAADAT, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.

McCARTNEY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
26–39. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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STATEMENT OF THE CASE
The present patent application concerns “the use of database query
results, and more specifically, to systems and method for changing contents
of a query result set displayed according to a graphical representation.”
Spec. ¶ 1. Claim 26 illustrates the claimed subject matter:
26. A computer program product for displaying a contact list,
the computer program product comprising:
a non-transitory computer readable storage medium
having computer readable program code embodied therewith, the
computer readable program code comprising;
computer readable program code configured to
performing a query of a data repository;
computer readable program code configured to display a
graphical representation of a set of query results identified from
the query, the set of query results including a plurality of query
result records, the graphical representation including a first
location corresponding to a first record field value and a second
location corresponding to a second record field value;
computer readable program code configured to display at
the first location at least one query result record having the first
record field value;
computer readable program code configured to select a
query result record of the at least one query result record having
the first record field value; and
computer readable program code configured to change a
field value of the selected query result record from the first
record field value to the second record field value by
transitioning the selected query result record to the second
location of the graphical representation.
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REJECTIONS
Claims 26–39 stand provisionally rejected on the ground of non-
statutory double patenting as unpatentable over claims 1–14 of co-pending
Application No. 13/420,919.
Claim 26 stands rejected under 35 U.S.C. § 112 as failing to comply
with the enablement requirement.
Claims 26–29 and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gemmell et al. (US 2008/0059899 A1; Mar. 6, 2008) and
Hirata et al. (US 6,317,739 B1; Nov. 13, 2001).
Claim 30 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Gemmell, Hirata, and Kagawa (US 2007/0027855 A1; Feb. 1, 2007).
Claim 31 stand rejected under 35 U.S.C. § 103(a) unpatentable over
Gemmell, Hirata, Kagawa, and Bedworth et al. (US 2006/0004721 A1; Jan.
5, 2006).
Claims 33–39 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Gemmell, Hirata, and Folting et al. (US 2007/0074130 A1; Mar. 29,
2007).
ANALYSIS
Non-Statutory Double Patenting and Enablement Rejections
Appellants have not contested the Examiner’s non-statutory double
patenting and enablement rejections and have therefore waived any
argument concerning these rejections. See 37 C.F.R. §§ 41.47(c)(iv),
41.41(b)(2). We summarily affirm these rejections.
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§ 103 Rejections
Claim 26 recites “computer readable program code configured to,”
among other things, do the following:
display a graphical representation of a set of query results
identified from the query, the set of query results including a
plurality of query result records, the graphical representation
including a first location corresponding to a first record field
value and a second location corresponding to a second record
field value;
. . . .
select a query result record of the at least one query result
record having the first record field value; and
change a field value of the selected query result record from the
first record field value to the second record field value by
transitioning the selected query result record to the second
location of the graphical representation.
App. Br. 16. Appellants argue the cited portions of Gemmell do not teach or
suggest changing a field value as recited in claim 26. See App. Br. 8–9;
Reply Br. 2–4. According to Appellants, Gemmell’s “records are not moved
to different locations of the histogram” and Gemmell’s “search results . . .
are not changed or transitioned between record field values at different
locations of the histogram.” App. Br. 8. Appellants also contend one of
ordinary skill in the art would not have combined Gemmell’s histogram with
Hirata’s drag-and-drop operation to arrive at the claimed invention. Id. at
10–11.
We find Appellants’ arguments persuasive. The cited portions of
Gemmell disclose a histogram of search results, the histogram including a
selection pane that allows a user to highlight a desired portion of the
histogram and generate a new histogram for the search results associated
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with the highlighted histogram portion. See Gemmell ¶ 10; Fig. 2, 3; Non-
Final Act. 8. The Examiner found the search results associated with the
highlighted portion of the histogram teach the recited “selected query result
record.” See Non-Final Act. 8. The Examiner also found Gemmell’s
process of generating a new histogram “implicitly teaches” changing a field
value of a selected query result record as recited in claim 26 because the
“user’s newly selected portion . . . prompts the interface to generate a new
histogram with respect to that portion.” Id. at 9. But as argued by
Appellants, the Examiner has not demonstrated that Gemmell’s process of
generating a new histogram changes a field value of the associated search
results. Rather, the cited portions of Gemmell indicate that highlighting a
portion of the histogram merely filters the search results so that Gemmell’s
system only displays the highlighted search results. See, e.g., Gemmell
¶¶ 45–46; Figs. 2, 3.
As for Hirata, the Examiner found Hirata’s drag-and-drop operation
also teaches changing a field value in the manner recited in claim 26 and
concluded it would have been obvious to combine Hirata’s and Gemmell’s
teachings to arrive at the invention recited in claim 26. Non-Final Act. 9–
10. However, even if Hirata’s drag-and-drop operation teaches changing a
field value as recited in claim 26, the Examiner has not provided sufficient
reasoning to support the conclusion that it would have been obvious to
combine Hirata’s and Gemmell’s teachings in the proposed manner. The
Examiner equated Gemmell’s histogram with the recited locations
corresponding to field values. See Non-Final Act. 8. Gemmell’s histogram
represents the number of search results that have a particular attribute.
Gemmell ¶ 41. For example, when the search results consist of images, the
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histogram represents the number of images created on a certain date. See id.
It is unclear why one of ordinary skill in the art would modify Gemmell’s
invention to allow users to drag-and-drop parts of the histogram to change a
static characteristic such as the number of images created on a specific date,
much less a field value associated with any particular search result as
required by claim 26. The Examiner’s conclusory assertions that “[d]oing so
would have enhanced the user interface of Gemmell” and “allowed users to
specifically tailor results to their needs” do not adequately address this issue.
For the above reasons, we do not sustain the Examiner’s obviousness
rejection of claim 26. Because claims 27–39 depend from claim 26, we also
do not sustain the Examiner’s rejections of these claims.
DECISION
We affirm the Examiner’s provisional rejection of claims 26–39 on
the ground of non-statutory double patenting, as well as the Examiner’s
rejection of claim 26 under 35 U.S.C. § 112. We reverse the Examiner’s
rejections of claims 26–39 under 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See
37 C.F.R. § 41.50(a)(1). No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED