Ex Parte Scherpa et al

Board of Patent Appeals and Interferences

Jul 5, 2012

11470054 (B.P.A.I. Jul. 5, 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.
11/470,054 09/05/2006 Josef Scherpa CAM920060025US1 (138) 7455
46321 7590 07/05/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
ZAHR, ASHRAF A
ART UNIT PAPER NUMBER
2175
MAIL DATE DELIVERY MODE
07/05/2012 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 JOSEF SCHERPA and
ANDREW L. SCHIRMER
________________

Appeal 2010-003924
Application 11/470,054
Technology Center 2100
________________

Before JOSEPH F. RUGGIERO, DENISE M. POTHIER, and
JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003924
Application 11/470,054

2
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner‟s
rejection of claims 1, 3, and 4. Claims 2 and 5-14 have been canceled.
(Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1, 3, and 4 stand rejected under 35 U.S.C. § 103(a) as obvious
over Healy (US 5,644,736; issued July 1, 1997) in view of Hill (US
2003/0197743 A1; published Oct. 23, 2003).
We affirm.

STATEMENT OF CASE
Appellants‟ invention relates to “selectably flattening a hierarchical
tree object structure in a hierarchical tree object browser.” (Abstract).
Claim 1 is illustrative and reproduced below with the key disputed limitation
emphasized:
1. A method of flattening an object hierarchy in an object browser,
the method comprising:
selecting a node in an object hierarchy in an object system
browser; and,
responsive to selecting the node, displaying content for the selected
node and content for at least one node below the selected node in the
object system browser, wherein displaying content for the selected
node and content for at least one node below the selected node in the
object browser, comprises displaying both files and containers for the
selected node and files and containers for at least one node below the
selected node in the object browser.

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CONTENTIONS
1

Regarding claim 1, Appellants argue that the cited prior art does not
teach “the display of both files and containers for the selected node and files
and containers for at least one node below the selected node in the object
browser.” (Br. 6 (emphases in original)). Appellants further argue that
“Examiner's improper claim construction of „files‟ as „information
technology elements‟ and „containers‟ as „organizational elements‟ exceeds
the legal standard for claim construction during examination and inhibits
Examiner's ability to properly compare the cited art to Appellants' claims.”
(Br. 8).
The Examiner finds that Hill discloses the argued limitations of claim
1. In particular, citing to Hill‟s paragraph 0039, the Examiner discusses
displaying either groups of information technology elements, all the
information technology elements, or all the information technology elements
and organizational elements. (Ans. 4). The Examiner also refers to Hill
(Fig. 3A) and Healy (Fig. 5) in mapping the recited “files” to “information
technology elements” (Ans. 9 ) and the recited “containers” to
“organizational elements.” (Id.).
Regarding claims 3 and 4, Appellants argue that the cited prior art
does not teach “„suppressing‟ properly construed as „to stop or prohibit the
publication or revelation thereof.‟” (Br. 9). Appellants further argue, with
regard to the pull-down menu (element 74) of Hill, that “the selection of an
entry in the pull-down menu results in an affirmative determination to

1
Rather than repeat the Examiner‟s positions and Appellants‟ arguments in
their entirety, we refer to the following documents for their respective
details: the Appeal Brief (Br.) filed July 21, 2009 and the Examiner‟s
Answer (Ans.) mailed October 28, 2009.
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display different combinations of „information technology elements‟ and
„organizational elements‟ and not to exclude from display „information
technology elements‟ and / or different „organizational elements.‟” (Br. 9
(emphasis in original)).
The Examiner finds that Hill discloses the argued limitations of claims
3 and 4. The Examiner finds “pull-down menu 74 can specify whether to
display either a group of information technology elements, based on element
type, all of the information technology elements, or all of the information
technology elements and the organizational elements.” (Ans. 5, 7 (citing
Hill, para. [0039])).

ISSUES
1. Under 35 U.S.C. § 103(a), has the Examiner erred in rejecting
claim 1 as obvious over Healy in view of Hill, when the recited terms,
“files” and “containers,” are broadly, but reasonably construed?
2. Under 35 U.S.C. § 103(a), has the Examiner erred in rejecting
claims 3 and 4 as obvious over Healy in view of Hill, when the recited
terms, “files,” “containers,” and “suppressing” are broadly, but reasonably
construed?

PRINCIPLES OF LAW
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification 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) (internal citations and quotations
omitted). “[T]he words of a claim „are generally given their ordinary and
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customary meaning.‟” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (internal citations omitted). “[T]he ordinary and
customary meaning of a claim term is the meaning that the term would have
to a person of ordinary skill in the art in question at the time of the invention,
i.e., as of the effective filing date of the patent application.” Id. at 1313.

ANALYSIS
Appellants argue that the Examiner‟s broadest reasonable
interpretation of claims 1, 3, and 4 is in fact unreasonable and exceeds the
legal standard for claim construction. Appellants specifically contest the
Examiner‟s factual findings that Hill discloses “files,” “containers,” and
“suppressing” as recited in the claims, when these disputed terms are
properly construed. (Br. 6-10).

I.
We now address claim 1. The appeal for claim 1 hinges on claim
construction. We turn to Appellants‟ Specification for hints of the proper
construction for the recited terms, “files” and “containers.” See In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d at 1364. Additionally, “[t]hough
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim.” See SuperGuide Corp. v.
DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
Appellants‟ Specification describes “[t]he present invention relates to
the display of objects such as files and containers in a hierarchy and more
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particularly to the flattening of the display of files and containers in an
object hierarchy.” (Specification, para. [0001] (emphasis added)).
Electronic objects in a data processing system often are organized
hierarchically in a parent-child relationship. Specifically, the earliest
file systems for computing environments provided a hierarchical
directory structure in which electronically stored documents could be
stored in specific directories or folders. Directories and folders,
collectively viewed as containers, could be nested to provide a level of
organization for electronic documents akin to a tree having a root
node, leaf nodes and intermediate branches and connecting nodes.

(Specification, para. [0002] (emphasis added)).
“The host computing platform can support the execution of a file
system 250 managing files and containers in memory 220, fixed storage 230
and even in remote storage through communications adapter 240.”
(Specification, para. [0022] (emphasis added)). Thus, consistent with the
disclosure, a broad, but reasonable construction of a “file” includes an
object that is managed by a file system providing a hierarchical directory
structure (see Specification, paras. [0001], [0002], and [0022]) and a
“container” includes an object, representing a directory or a folder, that is
managed by a file system providing a hierarchical directory structure (see
Specification, paras. [0001], [0002], and [0022]).
Given this understanding of “file” and “container,” the remaining
question for us is whether Hill does in fact disclose “files” and “containers”
in the flattened hierarchy as recited in claim 1 as found by the Examiner and
challenged by Appellants. (Ans. 4, 9; Br. 6-10).
Hill describes “[o]rganizations typically have a large number and
variety of information technology elements, such as software applications,
subsystems, and databases, which together make up the information
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technology system of the organization.” (Hill, para. [0003] (emphasis
added)). Additionally, in Figure 3A of Hill, the information technology
elements shown in section 71 include database files “File1,” “File2,”
“File3,” “File4,” and “File5.” (Hill, Figure 3A, para [0039]). It is clear that
the database files in Hill are “files” as they are illustrated as objects
(hierarchical list 62, listing 72 of information technology elements) managed
by a file system providing a hierarchical directory structure (hierarchical list
62). (Hill, Figure 3A, paras. [0036]-[0039]). Further, even if a more narrow
construction were to be given to the term “file,” such as that set forth by
Appellants (Br. 7), we find that any reasonable construction of the recited
term “file” would read on the database files “File1,” “File2,” “File3,”
“File4,” and “File5.” Appellants have presented no persuasive evidence as
to how, for example, “File5” in Figure 3A is not a “file.”
With regard to the recited “containers,” the information technology
elements shown in section 71 of Figure 3A include software applications or
folders, “App1,” “App2,” “App3,” “App4,” “App5,” “App6,” “App7,”
“App8,” and “Payroll.” (Hill, Figure 3A, para [0039]). Although the
software applications in Figure 3A are actually “information technology
elements,” we find that these elements fall within our definition of
“container” and appear in the flattened hierarchy.
Note, “Subsys5,” “File5,” and “Subsys6” contained within “App3” in
the left-side panel; “App3” acts as a directory or folder. Also, note
“Subsys1,” “Subsys2,” “Subsys4,” “File3,” “File4,” and “Subsys5”
contained within “Payroll” in the left-side panel; “Payroll” acts as a
directory or folder. The software application elements, like the other
information technology elements, are objects (hierarchical list 62, listing 72
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of information technology elements) managed by a file system providing a
hierarchical directory structure (hierarchical list 62). (Hill, Figure 3A, paras.
[0036]-[0039]). Accordingly, the software application elements in Hill are
containers within our definition as they contain other objects (including
files) and are managed by a file system providing a hierarchical directory
structure.
Further, even if we were to adopt Appellants‟ construction for
“container” (Br. 7), we reach the same result. Appellants‟ construction of a
“container” is “a class, a data structure, or an abstract data type (ADT)
whose instances are collections of other objects. In other words; They are
used to store objects in an organized way following specific access rules.”
2

(Br. 7). It is clear from Hill‟s Figure 3A that, for example, “App2” is an
abstract data type (representing an application) whose instances are
collections of other objects (see plus sign to its left or the expanded
hierarchy).
Lastly, Appellants do not dispute the Examiner‟s reasoning used to
reach the legal conclusion of obviousness or the Examiner‟s rationale for
combining Hill‟s teachings with Healy. (Br. 6-10). Accordingly, we are not
persuaded of error in the Examiner‟s finding that Hill does describe the
argued limitations including “files” and “containers.”

2
Appellants rely on a definition from Wikipedia. Notably, Wikipedia
disclaims the validity of its website‟s content and is unreliable. See
Techradium, Inc. v. Blackboard Connect Inc., 2009 WL 1152985, *4 n.5
(E.D. Tex. 2009).
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II.
We now address claims 3 and 4. The appeal for claims 3 and 4 also
hinges on claim construction. Appellants assert that the Examiner
misconstrues “files” and “containers.” (Br. 9). Our analysis of the
disputed terms “file” and “container” in claims 3 and 4 is the same as our
analysis of these terms for claim 1. Accordingly, we refer to our previous
discussion and are not persuaded of error in the Examiner‟s finding that Hill
describes the argued limitations including “files” and “containers.”
Concerning the recited term “suppressing,” we are not persuaded of
error in the Examiner‟s finding that Hill describes the argued limitations,
even if we adopt Appellants‟ construction. (Br. 9). Appellants argue, with
regard to the pull-down menu (element 74) of Hill, that “the selection of an
entry in the pull-down menu results in an affirmative determination to
display different combinations of „information technology elements‟ and
„organizational elements‟ and not to exclude from display „information
technology elements‟ and / or different „organizational elements‟.” (Br. 9
(emphasis in original)).
We are not persuaded that there is a distinction between (i) an
affirmative determination to display certain elements, and (ii) excluding
from display (“suppressing”) other elements. We agree with the Examiner‟s
finding that “the selection of the filter in pull down menu 74 [may be viewed
as] an affirmative decision to exclude certain elements from display.” (Ans.
10). Restated, the selection of the filter in pull-down menu 74 (see ¶ 0039)
is an affirmative decision to display certain elements, and at the same time,
is a decision to exclude or suppress other elements from being published or
revelaed (those not being displayed are being suppressed).
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Accordingly, we are not persuaded of error in the Examiner‟s finding
that Hill describes the argued limitations including “files,” and “containers,”
and “suppressing.”

CONCLUSION
Weighing Appellants‟ arguments that certain claim limitations were
missing from Healy and Hill, against the Examiner‟s specific and detailed
findings and our own claim construction as a whole, we conclude Appellants
have not shown error in the Examiner‟s obviousness rejection based on
Healy and Hill regarding claims 1, 3, and 4.
Appellants have not shown that the Examiner erred in rejecting claims
1, 3, and 4 under 35 U.S.C. § 103.

DECISION
The Examiner‟s decision rejecting claims 1, 3, and 4 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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