Ex Parte Payton et al

Board of Patent Appeals and Interferences

Apr 29, 2010

10620857 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRIAN G. PAYTON, STAVROS POLYVIOU,
MARIA N. SCANLON, SHEILA I. SHOLARS,
and ANDREW SPEAKES
____________________

Appeal 2009-004092
Application 10/620,8571
Technology Center 2100
____________________

Decided: April 29, 2010
____________________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed July 15, 2003. The real party in interest is International
Business Machines Corp. (Br. 1.)
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STATEMENT OF THE CASE
The Appellants appeal the Examiner’s rejection of claims 1, 2, 5-19,
22-36, and 39-54 under authority of 35 U.S.C. § 134(a). Claims 3, 4, 20, 21,
37, and 38 have been canceled. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appellants’ Invention
Appellants invented a query assist tool and method for “graphically
representing, creating, modifying and modeling structured language
queries.” (Spec. 2, ll. 14-15.) The query assist tool includes a user interface
for building and displaying query statements. The user interface displays
search conditions and predicates of the search conditions for manipulation
by the user to build the query statements. Specifically, a user may select and
group predicates, and the interface indicates the grouping by indenting,
adjacent positioning, and/or delineating with parenthesis or an equivalent
symbol. (Spec. 4, l. 6 to 5, l. 16; 9, l. 25 to 12, l. 14.)2

Representative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A query assist tool for assisting a user in creating
and/or editing a query statement, the query assist tool having a
user interface for building queries and a query model definition

2 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“Br.”)
filed July 12, 2007. We also refer to the Examiner’s Answer (“Ans.”)
mailed October 17, 2007.
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to populate a query model instance with elements of the created
query statement, the user interface comprising:
means for visually displaying a search condition of a
query statement in a first display area; and
means for visually selecting two or more predicates of
the displayed search condition for grouping; and
means responsive to selection of the two or more
predicates for visually indicating the grouping in the first
display area, wherein the means for indicating the grouping
further comprises one or more of the group consisting of:
indenting the grouped predicates relative to other
predicates of the search condition;
positioning the grouped predicates adjacent to each
other; and
delineating the group with parenthesis or an
equivalent symbol.

References
The Examiner relies on the following references as evidence of
unpatentability:
Banning US 5,421,008 May 30, 1995

Goldberg US 2005/0004911 A1 Jan. 6, 2005
(filed Sep. 25, 2003, claiming priority to S/N 60/413,914
filed Sep. 25, 2002)

Norman Murray, Norman Paton, and Carole Goble, Kaleidoquery: A
Visual Query Language for Object Databases, pp. 247 – 257, ACM Press,
New York (1998) (hereinafter “Murray”).

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Rejections on Appeal
The Examiner rejects claims 1, 2, 5-8, 15-19, 22-25, 32-36, 39-42, and
49-54 under 35 U.S.C. § 103(a) as being unpatentable over the combination
of Banning and Murray.3
The Examiner rejects claims 9-14, 26-31, and 43-48 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Banning,
Murray, and Goldberg.

Grouping of the Claims
Appellants argue the patentability of claims 1, 2, 5-8, 15-19, 22-25,
32-36, 39-42, and 49-54 as a group. (Br. 8.) We select independent claim 1
as the representative claim. We therefore treat claims 2, 5-8, 15-19, 22-25,
32-36, 39-42, and 49-54 as standing or falling with representative claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii) (2007).

ISSUES
Based on Appellants’ contentions, as well as the findings and
conclusions of the Examiner, the pivotal issue before us is as follows.
Does the Examiner err in finding the combination of the Banning and
Murray references would have collectively taught or suggested “visually
indicating the grouping in the first display area” by “indenting the grouped
predicates relative to other predicates of the search condition[,] positioning

3 We revise this rejection to eliminate canceled claims 3 and 4, and correct a
typographical error. The Examiner’s actual rejection states that “claims 1-8,
15-19, 2-25, 32-36, 39-42, and 49-54 under 35 U.S.C. § 103(a).” (Ans. 4.)
We treat the erroneous statement of the rejection as harmless error.
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the grouped predicates adjacent to each other[, or] delineating the group with
parenthesis or an equivalent symbol” as recited in Appellants’ claim 1?

FINDINGS OF FACT (FF)
Appellants’ Specification
1. Appellants’ Specification does no explicitly define “delineating
the group with parenthesis or an equivalent symbol.” Appellants’
Specification does, however, explain that: “Grouping is effected by
highlighting the desired predicates in window 36 and then clicking on ‘(..)’
button 41. The action of clicking on button 41 again causes the parenthesis
and indentation, or similar indicia of grouping, to appear in window 36.”
(Spec. 12, ll. 2-5; see Br. 3.)

Banning Reference
2. Banning describes a user interface displaying search conditions
of query statements and predicates of the search conditions in a window
(display area) of the user interface. The user interface displays user selected
and user grouped predicates (two or more selected predicates grouped
together by a user), and indicates the grouping of predicates by the user.
(Col. 8, ll. 19-30; col. 27, l. 63 to col. 28, l. 40; col. 30, ll. 7-31; Figs. 2
(elements 53, 56, & 57), 14, & 15; see also col. 5, ll. 62-66, col. 6, l. 50 to
col. 7, l. 2; col. 7, l. 30 to col. 8, l. 18; col. 8, l. 54 to col. 9, l. 7; col. 9, ll. 41-
56; col. 9, l. 65 to col. 10, l. 4; Figs 3, 4, 5, and 8-13.)
3. Banning describes SQL WHERE and HAVING statements
(clauses) – including predicates (col. 9, ll. 41-56; col. 9, l. 65 to col. 10, l. 4)
– displayed in windows of the user interface (Row Condition and Having
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Condition windows). (Col. 5, ll. 62-66, col. 6, l. 50 to col. 7, l. 2; col. 7, ll.
58-67; col. 8, ll. 19-30; col. 27, l. 63 to col. 28, l. 40; Fig. 2, elements 56 &
57.) Banning explicitly describes visually displaying the WHERE
statement, as well as selecting, grouping, distinguishing, and displaying
(reverse-videoing) its predicates. (Col. 30, ll. 7-31; Figs. 2 (elements 53, 56,
& 57), 14 (elements 572, 574, & 576), & 15 (elements 582 & 584).)
4. Banning describes functions comprising objects representing
column names (e.g., YEAR, SALARY, DEPT, JOB), operands (=, >, <), and
values that are visually selected, distinguished, and grouped to form grouped
predicates. The user interface visually distinguishes the grouped predicates
in the user interface Row Cond window (element 56) by displaying the
predicates within a rectangular outline linked by line segments to operation
nodes (grouping nodes) displayed within oval outlines. The user interface
displays the predicates indented from the nodes and from one another. The
user interface transforms the grouped predicates of a user interface window
(Row Cond window) into the query statement displayed in window 53 –
indicated by the nested parenthesis. (Col. 6, ll. 50-57; col. 6, l. 66 to col. 7,
l. 2; col. 7, ll. 58-67; col. 8, ll. 19-30; col. 30, ll. 7-31; Figs. 2 (elements 53,
56, & 57), 14 (elements 572, 574, & 576), & 15 (elements 582 & 584).)

PRINCIPLES OF LAW
Burden on Appeal
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for any rejection in
order to provide an applicant with notice of the reasons why the applicant is
not entitled to a patent on the claim scope sought. In re Oetiker, 977 F.2d
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1443, 1445 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir.
1984); Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (Precedential).
An appellant has the opportunity on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998), overruled in
part on other grounds, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 422
(2007)); Frye, 94 USPQ2d at 1075.

Obviousness
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR, 550 U.S. at 406; Graham v. John Deere
Co., 383 U.S. 1, 13 (1966). The question of obviousness is resolved on the
basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, and (3) the level of skill in the art. Graham, 383
U.S. at 17. See also KSR, 550 U.S. at 407 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasizes “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and states that “[t]he combination of familiar elements according to
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known methods is likely to be obvious when it does no more than yield
predictable results.” Id. at 415-16. The Court explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417. The operative question is thus “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id.

ANALYSIS
Rejection of Claims 1, 2, 5-8, 15-19, 22-25, 32-36, 39-42, and
49-54 under 35 U.S.C. § 103(a)
Appellants contend that the combination of the Banning and Murray
references do not individually or collectively teach or suggest “visually
indicating the grouping in the first display area” by “indenting the grouped
predicates relative to other predicates of the search condition[,] positioning
the grouped predicates adjacent to each other[, or] delineating the group with
parenthesis or an equivalent symbol” as recited in Appellants’ claim 1 (Br.
10, claim 1). (Br. 5-8.) The Examiner finds that the prior art teaches each
feature of Appellants’ claim 1 and maintains that the claim is properly
rejected. (Ans. 4-6, 13-16.) Specifically, the Examiner finds that Banning
teaches a user interface visually displaying a search condition in a first
display area, visually selecting two or more predicates for grouping, and
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visually indicating the grouping. (Ans. 4-5.) The Examiner further finds
that Banning does not disclose “indentation, adjacent positioning, or
delineation by a symbol,” but that Murray teaches indenting grouped
predicates. (Ans. 5.) Accordingly, we decide the question of whether the
Examiner erred in finding the combination of the Banning and Murray
references would have collectively taught or suggested the disputed
limitations as recited in Appellants’ claim 1.
After reviewing the record on appeal, we will affirm the Examiner’s
rejection for the reasons that follow. While we generally agree with the
Examiner’s findings concerning Banning, we disagree with the Examiner’s
interpretation of Banning with respect to visually indicating the grouping of
predicates. Banning provides a broader disclosure of visually indicating
groupings of predicates than the Examiner appreciates. We find Banning
describes indenting the grouped predicates relative to other predicates,
adjacent positioning of the grouped predicates, and/or delineating the group
with parenthesis or an equivalent symbol. Thus, we find Banning describes
“visually indicating the grouping in the first display area” by “indenting the
grouped predicates relative to other predicates of the search condition[,]
positioning the grouped predicates adjacent to each other[, or] delineating
the group with parenthesis or an equivalent symbol” as recited in
Appellants’ claim 1. Therefore, we need not address the Murray reference
in our obviousness analysis, and we conclude that the Banning reference
alone would have taught or suggested the disputed limitations.
We note that we apply a somewhat different reasoning than that
provided by the Examiner. But, where, as here, the limitations at issue are
found in a single reference and the thrust of the obviousness reasoning
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remains the same, the Board may rely on a single reference to affirm a
multiple reference rejection under 35 U.S.C. § 103(a) without designating it
a new ground of rejection. Reliance upon fewer references in affirming a
rejection under 35 U.S.C. § 103 does not normally constitute a new ground
of rejection. See In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976); In re
Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966); In re Bush, 296 F.2d 491, 496
(CCPA 1961); see also Hyatt v. Doll, 576 F.3d 1246, 1276 (Fed. Cir. 2009)
(“The Board cannot be said to have presented a new ground of rejection
simply by elaborating on the examiner’s rejection or by using different
words.”).
We begin our analysis by construing Appellants’ claim 1. We
determine the scope of the claims in patent applications not solely based on
the claim language, but upon giving claims “their broadest reasonable
interpretation consistent with the [S]pecification” and “in light of the
[S]pecification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted). Appellants’ claim 1 recites “visually indicating the
grouping in the first display area” by “indenting the grouped predicates
relative to other predicates of the search condition[,] positioning the grouped
predicates adjacent to each other[, or] delineating the group with parenthesis
or an equivalent symbol.” We broadly but reasonably construe this
limitation to simply mean displaying in a separate area or window (first
display area) a grouping of conditional functions (predicates – conditional
functions (equations) containing predicate elements that evaluate to TRUE
or FALSE with respect to instances in the database) indicated by: (1)
indenting with respect to other functions/predicates, (2) adjacent positioning
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(positioning near to each other), and/or (3) delineating – describing, or
representing by drawn lines or by outlining (Merriam-Webster’s Collegiate
Dictionary, Tenth Ed. (2002)) – with parenthesis or an equivalent symbol.
Appellants do not dispute that Banning describes displaying a
grouping of predicates in a first display area of a user interface. (Br. 5-8.)
And, we find – as did the Examiner – that Banning does describe a user
interface displaying grouped predicates in a window of the user interface.
(Ans. 4-5; FF 2, 3.) Thus, the issue narrows to whether Banning would have
taught or suggested visually indicating a grouping of predicates in the
manner recited in claim 1 – i.e., indenting, adjacent positioning, and/or
delineating (with parenthesis or equivalent symbol). We find that Banning
describes indenting a predicate grouping relative to other predicates,
adjacent positioning of predicates in the predicate grouping, and graphically
outlining and linking (delineating) the predicates and the predicate grouping,
which we find is equivalent to describing the predicate grouping with
parenthesis.
Specifically, Banning describes visually displaying an SQL WHERE
statement that includes predicates in a Row Cond window (Row Condition
window) (element 56) of a user interface. Banning explicitly describes
visually selecting, grouping, and displaying (utilizing reverse-video) the
statement predicates. The user interface displays the predicate grouping, in
Row Cond window (56), by displaying the predicates near one another
(adjacent positioning) within rectangular outlines linked by line segments to
operation nodes displayed within oval outlines (delineation). The groupings
are indented from the nodes and from other predicates. The user interface
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transforms the grouped predicates into a nested parenthetical portion of the
query statement displayed in window 53. (FF 2, 3, 4.)
Thus, we find Banning expressly discloses adjacent positioning of the
predicates in the predicate grouping. We also find that one of skill in the art
at the time of Appellants’ invention would have understood that the
graphically outlined and linked predicates and predicate groupings displayed
in Banning’s user interface: (1) were indented relative to other predicates;
and (2) were delineated. We further find that a skilled artisan would have
understood that Banning’s delineation was equivalent to describing
(delineating) the grouping with parenthesis or an equivalent symbol as
recited in Appellants’ claim 1 – especially in view of Appellants’ disclosure
that predicate grouping “is effected by highlighting the desired predicates,”
which “causes the parenthesis and indentation, or similar indicia of
grouping, to appear in window 36.” (FF 1.) We conclude visually
indicating groupings (of predicates) in this manner is tantamount to the
predictable use of prior art elements according to their established functions
– an obvious improvement. See KSR, 550 U.S. at 417.
We are not persuaded by Appellants’ contrary arguments that Banning
does not teach the disputed features (Br. 5-7), as Appellants do not provide
any detailed analysis of the Banning reference. Thus, Appellants have not
persuaded us to find error in the Examiner’s obviousness rejection of claims
1, 2, 5-8, 15-19, 22-25, 32-36, 39-42, and 49-54.

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Rejection of Claims 9-14, 26-31, and 43-48 under
35 U.S.C. § 103(a)
Appellants do not separately argue dependent claims 9-14, 26-31, and
43-48. They instead reiterate their previous arguments made with respect to
independent claim 1 – “Goldberg (as with Banning and Murray) fails to
disclose means for visually indicating a grouping of two or more predicates .
. . .” (Br. 8.) We address only those arguments that Appellants present in
the Brief. Arguments that Appellants could have made but chose not to
make in the Brief are waived. See 37 C.F.R. § 41.37(c)(1)(vii).
As we previously explained with respect to claim 1, supra, we find
Appellants’ arguments unpersuasive with respect to the obviousness
rejection of claim 1. Accordingly, we affirm the Examiner’s obviousness
rejection of claims 9-14, 26-31, and 43-48.

CONCLUSION OF LAW
On the record before us, we find the Examiner did not err in rejecting
claims 1, 2, 5-19, 22-36, and 39-54 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1, 2, 5-19, 22-36, and
39-54 under 35 U.S.C. § 103(a).

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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

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