Ex Parte Zeller et al

Patent Trial and Appeal Board

Dec 10, 2014

10315264 (P.T.A.B. Dec. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARIJANE M. ZELLER, MICHAEL D. ELDER,
OLIVED HEINZ, and ANDREW L. SCHIRMER
___________

Appeal 2012-007530
Application 10/315,264
Technology Center 2100
____________

Before JEFFREY S. SMITH, DANIEL N. FISHMAN, and
CATHERINE SHIANG, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) of the final rejection of
claims 1–25.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 In this Opinion, we refer to Appellants’ Appeal Brief (“App. Br.,” filed
October 24, 2011), Appellants’ Reply Brief (“Reply Br.,” filed April 10,
2012), the Examiner’s Answer (“Ans.,” mailed February 10, 2012), and the
originally filed Specification (“Spec.,” filed December 9, 2002).
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STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention relates to graphically displaying an organization
chart including two individuals and their relative relationship within an
organization along with profile, awareness, communication, and nesting
indicators for individuals on the chart. Spec. 1:6–9.
Claim 1, reproduced below, is illustrative with the disputed limitation
in italics:
1. A method of presenting an organization structure,
comprising the steps of:
providing a database of names of individuals in an
organization, each of said individual names having an
associated manager name;
presenting a view of the names of individuals on a
display to a user;
receiving a selection of a first and a second individual
from said organization from the user without requiring a
search;
constructing automatically, in response to the selection, a
view showing names of those in a manager chain of said first
and second individuals, every name in the manager chain being
a name of at least one of the first individual, the second
individual or a manager of either of the first or second
individual up to the point where there is a common manager,
and then a single manager chain to at least one manager at a
higher level than the common manager in said organization,
wherein the single manager chain showing only manager names
above the common manager, wherein the constructing is
configured to construct the view from any first and second
individual in said organization regardless of whether the first
and second individual share a common immediate manager; and
displaying said view on the display to the user.
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THE REJECTIONS
Claims 1–25 are rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement.
Claims 1, 4, 5, 10, 13, 14, and 19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Robertson (US 2002/0030703 A1; Mar. 14,
2002) and Kirby (US 2004/0024629 A1; Feb. 5, 2004).
Claims 2, 3, 6–9, 11, 12, 15–18, and 20–25 are rejected under 35
U.S.C. § 103(a) as unpatentable over Robertson, Kirby, and Enete (US
2003/0208543 A1; Nov. 6, 2003).

Only those arguments actually made by Appellants have been
considered in this Decision. Arguments that Appellants did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii)(2011).
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner erred. App. Br. 6–15; Reply Br. 2–7. We are
unpersuaded by Appellants’ contentions. We adopt as our own the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and as set forth by the Examiner in the Examiner’s Answer in response
to Appellants’ Appeal Brief (see Ans. 20–25). However, we highlight and
address specific arguments and findings for emphasis as follows.

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SECTION 112 REJECTION
ISSUE
Has the Examiner erred by finding the Specification fails to provide
sufficient support for the disputed limitation of claim 1 to comply with the
written description requirement of 35 U.S.C. § 112, first paragraph?

ANALYSIS
The Examiner cannot find support for the disputed limitation
sufficient to convey reasonably to the skilled artisan that Appellants, at the
time of filing of the subject application, had possession of the claimed
invention. Ans. 4–6. Appellants argue paragraphs 10, 31, and 32 of the
Specification (corresponding to Spec. 3:5–17, 9:1–12, and 9:13–23,
respectively, of the Specification as filed) sufficiently disclose the disputed
limitation specifically contending, “[t]he fact that no search is mentioned in
the description [(in ¶¶ 10, 31, and 32)] implies that it is not necessary.”
App. Br. 6; see also Reply Br. 2. Appellants further contend, “a user
looking at a list and selecting a name is not requiring a search.” Reply Br. 3.
We are not persuaded the Examiner erred. The Examiner explains,
“[i]n order to obtain the data from the database a search would have to be
performed.” Ans. 22. In particular, we are unpersuaded by Appellants’
argument that a user looking at a list and selecting a name is not a search
(Reply Br. 3). Appellants’ Specification provides no definition as to a
search that is intended to be excluded by the negative limitation of the claim.
We find the plain meaning of the noun “search” is, “The process of seeking
a particular for specific data.” Microsoft Computer Dictionary, Fifth
Edition, p. 469 (2002). Thus, we find that some type of search must be
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performed to select the first and second individuals from the organization.
Consistent with the plain meaning, we agree with the Examiner that some
form of search must be performed to select the first and second individuals
of the organization. Ans. 22. Even a user looking at a list of names is
performing a search (a manual search) by seeking specific data in the list.
Furthermore, the mere absence of a positive recitation requiring a
search in the original disclosure is not basis to support exclusion of the
disputed limitation (a negative limitation). MPEP § 2173.05(i). Our
reviewing court has held, “Negative claim limitations are adequately
supported when the specification describes a reason to exclude the relevant
limitation.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed.
Cir. 2012) (emphasis added). Here, no such reason to exclude a search is
found in the Specification. Paragraph 10 of the Specification, generally
characterizing the state of the prior art, suggests it is undesirable to require
multiple searches to identify two parties of an organization, but does not
provide a reason to exclude any search as purportedly claimed.
Furthermore, paragraphs 31 and 32 disclose the use of a database to store the
organizational information (as recited in claim 1), but fail to provide a
reason to exclude performing a search as recited in the disputed negative
limitation.
This is not a case where, as in Santarus, skilled artisans would
understand from the Specification the disadvantages of a particular
alternative that includes the features excluded by the negative limitation.
See Santarus, 694 F.3d at 1351. Rather, this is a case where Appellants’
negative limitation (purportedly excluding a search) effectively introduces a
new concept that is not reasonably supported by the original disclosure. See,
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e.g., Omega Eng’g, Inc. v. RaytekCorp., 334 F.3d 1314, 1323 (Fed. Cir.
2003) (finding no express disclaimer or independent lexicography in the
written description to justify adding negative limitation); Ex parte Grasselli,
231 USPQ 393, 394 (BPAI 1983) (aff'd mem., 738 F.2d 453 (Fed. Cir.
1984)) (“[T]he express exclusion of certain elements implies the permissible
inclusion of all other elements not so expressly excluded. This clearly
illustrates that such negative limitations do, in fact, introduce new
concepts.”)
In view of the above discussion, we are not persuaded the Examiner
erred by finding the Specification fails to provide support for the disputed
limitation of claim 1 sufficient to comply with the written description
requirement of 35 U.S.C. § 112, first paragraph. Independent claims 10 and
19 include the same negative limitation and are argued together with claim
1. App. Br. 8. Dependent claims 2–9, 11–18, and 20–25 incorporate the
same negative limitation and are, therefore, subject to the same rejection
under § 112, first paragraph.
Therefore, we sustain the Examiner’s rejection of claims 1–25 under
§ 112, first paragraph.

SECTION 103 REJECTIONS
CLAIMS 1, 4, 5, 10, 13, 14, AND 19
The Examiner finds Robertson teaches all elements of claim 1 except,
“without requiring a search,” but finds Kirby discloses this feature in
combination with Robertson. Ans. 6–8. The Examiner also finds, in the
alternative, Applicant’s Admitted Prior Art (“AAPA”—Spec. 3:5–17)
provides the missing feature of Robertson such that the combination of
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Robertson and AAPA discloses all features of claim 1. Ans. 8. Appellants
argue Robertson requires a search in order to select two individuals (App.
Br. 9) and further assert Kirby does not suggest making a selection of two
individuals resulting in a new view being automatically constructed (App.
Br. 10). Appellants further argue Robertson fails to automatically construct
a new hierarchy for the user’s view in response to selecting two individuals
but rather requires a user to select a “>>” control to cause the combined
display of a common management hierarchy to be displayed. App. Br. 10–
11. Still further, Appellants argue “there is no motivation to use a selection
of Robertson with the tabbed view of Kirby.” App. Br. 10.

Issues
Appellants’ arguments present us with issues as follows:
1. Has the Examiner erred in reasoning there is motivation to
combine Robertson and Kirby?
2. Has the Examiner erred by finding the combination of Robertson
and Kirby teaches or reasonably suggests: (1) selecting two
individuals without a search; and (2) “constructing automatically,
in response to the selection, a view showing names of those in a
manager chain of said first and second individuals,” as recited in
claim 1?

Issue 1 Analysis
We are not persuaded by Appellants’ argument that there is no
motivation for the proposed combination. App. Br. 10. The Examiner finds
motivation to combine the references as, “offering the obvious advantage of
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making the systems more responsive since a search is not performed. Also,
adding the nesting indicator offers the obvious advantage of expanding a
group to show additional information (Kirby, paragraph [0051]).” Ans. 8.
Appellants have not shown error in the Examiner’s reasoning. Rather,
Appellants provide only the unsupported assertion, “there is no motivation to
use a selection of Robertson with the tabbed view of Kirby.” App. Br. 10.
Thus, we find the Examiner has expressed a reason for the proposed
combination based on rational underpinnings (KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 418 (2007)) and Appellants have not persuasively shown that
the Examiner erred in expressing a motivation to combine Robertson and
Kirby.

Issue 2 Analysis
We are not persuaded by Appellants’ arguments. Regarding selecting
two individuals without requiring a search, Appellants’ argument improperly
attacks the references separately, although the rejection is based on the
combined teachings of the references. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Furthermore, “The test for obviousness is not .
. . that the claimed invention must be expressly suggested in any one or all of
the references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). The Examiner
explains Robertson shows a user selecting first and second individuals
(“John Doe” and “John F. Doe”) from a list of names. Ans. 23 (citing
Robertson Figures 9–11 and ¶¶ 69–73). Thus, the Examiner finds Robertson
discloses “receiving a selection of a first and second individual from said
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organization from the user.” Id. The Examiner then relies on Kirby only for
disclosing, in combination with Robertson, a selection “without requiring a
search.” Id. In particular, the Examiner explains specifically that the “>>”
control requested by the user results in the automatic generation of the
combined view (up to and through a common manager) in response to the
user’s selection of the first and second individuals. Ans. 24. We agree.
Responsive to the user’s selection of the first and second individuals, a new
view is generated and displayed. The claim does not preclude an additional
step of a user selecting the “>>” control to cause the automatic generation of
the updated view based on (i.e., responsive to) the previously selected first
and second individuals.
Appellants maintain the selection of Robertson “is specifically a
selection from a search result.” Reply Br. 4. We disagree. The selection
process of Robertson, i.e., the processing of selecting the first and second
individual, does not require a search, but rather requires the user to view the
list of names and select the first and second individuals—no search is
required for the processing to select the individuals. The claim does not
require that a search is never performed in any processing preceding the
selection processing. Rather, the claim only requires that the selection of the
first and second individuals does not require a search. Thus, Kirby adds
cumulative support for performing a selection process without requiring a
search.
In view of the above discussion, we are not persuaded the Examiner
erred by finding the combination of Robertson and Kirby teaches or
reasonably suggests: (1) selecting two individuals without a search; and (2)
“constructing automatically, in response to the selection, a view showing
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names of those in a manager chain of said first and second individuals,” as
recited in claim 1. Appellants argue the Examiner erred in rejecting
independent claims 10 and 19 and dependent claims 4, 5, 13, and 14 for
essentially the same reasons as claim 1. App. Br. 11–13. For the same
reasons as claim 1 discussed supra, we are unpersuaded the Examiner erred.
We, therefore, sustain the Examiner’s rejection of claims 1, 4, 5, 10,
13, 14, and 19.

CLAIMS 2, 3, 6–9, 11, 12, 15–18, AND 20–25
Appellants argue the Examiner erred in rejecting claims 2, 3, 6–9, 11,
12, and 15–18 for the same reasons as claim 1 (App. Br. 14) and for the
same reasons discussed supra, we are unpersuaded of Examiner error.

Issue 3
Has the Examiner erred by finding Enete (in combination with
Robertson and Kirby), teaches or reasonably suggests the people awareness
data features of claims 20–22?

Issue 3 Analysis
Regarding claims 20–22, the Examiner finds Robertson and Kirby
teach the limitations as applied to claim 1 and finds Enete discloses the
additional limitations relating to people awareness data. See Ans. 9–11, 15
(citing Enete ¶¶ 63, 66, 74). Appellants argue Enete discloses only a “buddy
list” for a user of a video messaging system and thus, fails to disclose the
recited limitations relating to people awareness data. App. Br. 14. We
disagree. The Examiner explains the buddy information of Enete “informs
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any subscriber who has identified the sender as a buddy that the sender is
currently online” and asserts “[t]his data is awareness data since it makes
other people aware of a user/buddy logging on and because the host
becomes aware of the user’s presence.” Ans. 25. We agree. Appellants’
Specification provides no limiting definition of “awareness data” but, the
Specification provides examples of awareness data as including “whether an
individual is logged on to a network.” Spec. 10:1–14. Thus, we find the
Examiner’s interpretation of “awareness data” as encompassing the online
status of a user in Enete is broad but reasonable and is consistent with
Appellants’ Specification. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Appellants’ Reply Brief does not persuasively
rebut the Examiner’s position. Reply Br. 6.
Thus, we are not persuaded the Examiner erred by finding Enete (in
combination with Robertson and Kirby) teaches or reasonably suggests the
people awareness data features of claims 20–22 and we sustain the rejection
of claim 20–22.
Appellants provide no arguments regarding the rejection of claims
23–25 and thus, we summarily sustain the rejection of claims 23–25.

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DECISION
For the above reasons, the Examiner’s decision rejecting claims 1–25
under § 112 is affirmed.
For the above reasons, the Examiner’s decisions rejecting claims 1–25
under § 103 are 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)(iv).

AFFIRMED

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