Tam, David

Patent Trials and Appeals Board

Oct 24, 2019

13844462 - (D) (P.T.A.B. Oct. 24, 2019)

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.
13/844,462 03/15/2013 David Tam 1301-026U 7310
112025 7590 10/24/2019
Shutts & Bowen LLP
Steven M. Greenberg, Esq.
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
EXAMINER
PARCHER, DANIEL W
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
10/24/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@crgolaw.com
patents@shutts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte DAVID TAM1
________________

Appeal 2019-000333
Application 13/844,462
Technology Center 2100
________________

Before BRADLEY W. BAUMEISTER, JASON V. MORGAN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 4, and 7, which constitute all of the pending
claims. Appeal Br. 1, 28–30. These claims stand rejected on three grounds:
(1) under 35 U.S.C. § 112(b) or § 112, ¶ 2 (pre-AIA), for being indefinite,
(2) under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter, and (3) under 35 U.S.C. § 103 for being unpatentable. Final Action
mailed Nov. 16, 2017 (“Final Act.”) 2–25. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
SugarCRM, Inc. Appeal Brief filed June 25, 2018 (“Appeal Br.”) 2.
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THE CLAIMED INVENTION
Appellant describes the present invention as follows:
Embodiments of the invention provide a method, system
and computer program product for drag and drop manipulation
of object attribute values. In an embodiment of the invention, a
method for drag and drop manipulation of object[-]attribute
values is provided. The method includes detecting a drop event
for an object in a GUI of an application executing in memory of
a computer. The method additionally includes identifying a
region of the GUI into which the object is dropped and retrieving
a value associated with the identified region, that [region value
being] additionally associated with an attribute of the object.
Finally, the method includes setting the attribute of the object
with the retrieved value.
Abstract.
Independent claim 1 illustrates the appealed claims. It is reproduced
below with formatting modified for clarity:
1. A method for drag and drop manipulation of object
attribute values, the method comprising:
[i] loading an attribute set for objects of an application;
[ii] selecting a particular one of the attributes;
[iii] determining a value for the particular one of the attributes
for each of the objects of the application;
[iv] positioning each one of the objects in a region of a
graphical user interface (GUI) associated with a corresponding
determined value;
[v] detecting a drop event for an object in the GUI; and,
[vi] responding to the drag and drop event by identifying a
display region of the GUI into which the object is dropped and a
corresponding value for the identified display region; and,
[vii] invoking a method member of the object to set the attribute
of the object with the corresponding value.

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STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

35 U.S.C. § 112
The Rejection and Contentions
Claims 1, 4, and 7 stand rejected under 35 U.S.C. § 112(b) or § 112,
¶ 2 (pre-AIA), for failing to particularly point out and distinctly claim the
subject matter that the inventor regards as the invention. Final Act. 2–3.
The Examiner notes that claim 1 recites “determining a value” and later
recites “associated with a corresponding determined value”. Final Act. 2.
The Examiner determines that “[i]t is unclear whether the ‘determining a
value’ corresponds to the ‘determined value’.” Id. The Examiner takes the
position that “[f]or the purposes of rejection under prior art, the claim is
interpreted as ‘the corresponding determined value’ directed to the value
determined earlier.” Id.
The Examiner additionally notes that “Claim 1 further recites ‘set the
attribute of the object with the corresponding value’.” Id. at 3. According to
the Examiner, “it is unclear whether this is in reference to the earlier recited
‘a corresponding value for the identified display region’ or ‘associated with
a corresponding determined value’.” Id. The Examiner, likewise, rejects
independent claims 4 and 7 for the same two reasons. Id. at 2–3.
In spite of determining that the claims are not reasonably definite, the
Examiner also explains that “[f]or the purposes of rejection under prior art,
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the claim is interpreted as directed to ‘set the attribute of the object with the
corresponding value for the identified display region’.” Id. at 3.
In the Appeal Brief, Appellant reproduces a block quote of the
Examiner’s § 112 rejection and states that “[f]or the purposes of this Appeal
Brief, the Board is requested to read Appellants’ claims in light of
Examiner’s suggestions in the Final Office Action.” Appeal Br. 5.
Analysis
In requesting that the Board read the claims “in light of Examiner’s
suggestions,” it is not completely clear whether Appellant is intending to
challenge the rejection. Appellant’s request can be interpreted as an
acknowledgment that the claims are indefinite, coupled with an explanation
of what the claims are intended to mean, as well as an indication of how the
claims will be amended in the future. Alternatively, though, Appellant’s
request also can be interpreted as constituting the following argument: the
fact that the Examiner reasonably was able to understand the intended
meaning of the claims demonstrates that one of ordinary skill reasonably can
ascertain the metes and bounds of claim protection being sought.
We resolve the statement’s ambiguity in Appellant’s favor and
interpret the Appeal Brief as arguing against the propriety of the
indefiniteness rejection. Our ensuing review of the claims’ clarity indicates
that the metes and bounds of claim protection being sought are reasonably
ascertainable.
To be sure, some degree of ambiguity may arise from reading the
claim language “a corresponding value” in isolation. However, the Supreme
Court has recognized “that absolute precision [of language] is unattainable,”
and that the “definiteness command” of § 112, ¶ 2, “require[s] that a patent’s
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claims, viewed in light of the specification and prosecution history, inform
those skilled in the art about the scope of the invention with reasonable
certainty.” Nautilus, Inc. v Biosig Instruments, Inc., 572 US 898, 910 (2014)
(emphasis added).
In the present case, the full limitations pertaining to the questioned
terms, “determining a value” and “associated with a corresponding
determined value,” read as follows:
[i] loading an attribute set for objects of an application;
[ii] selecting a particular one of the attributes;
[iii] determining a value for the particular one of the attributes
for each of the objects of the application;
[iv] positioning each one of the objects in a region of a
graphical user interface (GUI) associated with a corresponding
determined value.
Claim 1 (emphasis added).
Reading limitations [i]–[iii] as an ordered combination renders it
reasonably clear that claim 1 requires that a specified attribute is associated
with a plurality of objects, and limitation [iii] requires that the particular
value of this specified attribute be determined for each object. It is
reasonably clear that limitation [iv] requires that different regions of the GUI
be associated with individual values of the attribute. It also is reasonably
clear that limitation [iv] further requires that each object initially be
positioned in the respective region of the GUI that is associated with the
initial or “determined” value of the object’s specified attribute.
Limitations [v]–[vii] of claim 1 read as follows:
[v] detecting a drop event for an object in the GUI;
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[vi] responding to the drag and drop event by identifying a
display region of the GUI into which the object is dropped and a
corresponding value for the identified display region; and,
[vii] invoking a method member of the object to set the attribute
of the object with the corresponding value.
Limitations [vi] and [vii] render it reasonably clear that upon detecting
a drag and drop event for an object, the object’s method member sets the
value of the object’s specified attribute to the value associated with the
region of the GUI into which the object has been dropped.
As such, we see no unreasonable ambiguity in the meaning of the
words of claim 1 or in the metes and bounds of claim protection being
sought.
We, therefore, do not sustain the indefiniteness rejection of
independent claim 1 or of claims 4 and 7, which recite similar limitations.

35 U.S.C. § 101
The Rejection
Claims 1, 4, and 7 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 3–5. The Examiner
determines that “[t]he claims are directed to the abstract idea of classifying
data and storing the classification via object attributes.” Final Act. 3. The
Examiner further determines that
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional computer elements, which are recited at a
high level of generality, provide conventional computer
functions that do not add meaningful limits to practicing the
abstract idea. Additionally, ¶0004–¶0006 of Applicant’s
specification describes that the use of drag and drop operations
to create object associations is well known in the art, and further
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that method members used for retrieving and storing object
attributes are well known in the art.
Id.
Principles of Law
A. SECTION 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and
Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561
U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
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such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citing Benson and
Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO SECTION 101 GUIDANCE
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of 35 U.S.C.
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”). Under the 2019
Guidance, we first look to whether the claim recites the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
2019 Guidance, 84 Fed. Reg. 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Guidance, 84 Fed. Reg. 56.
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Analysis
STEP 2A, PRONG 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether claims 1, 4, and 7 recite any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). 84 Fed. Reg. 52–55.
Limitation [ii] of claim 1 recites “selecting a particular one of the
attributes.” Limitation [iii] recites determining a value for the particular one
of the attributes for each of the objects of the application.” Both of these
limitations reasonably can be characterized as reciting mental processes that
entail concepts that can be performed in the human mind, such as an
observation, evaluation, judgment, or opinion.
The 2019 Guidance expressly recognizes mental processes as
constituting a patent-ineligible abstract idea. 84 Fed. Reg. 52. Accordingly,
limitations [ii] and [iii] of claim 1 reasonably can be characterized as
reciting patent-ineligible abstract ideas under step 2A, prong 1, of the
2019 Guidance. Claims 4 and 7 reasonably can be characterized as reciting
patent-ineligible ideas for the same reasons.
STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claims 1, 4, and 7 recite additional elements that integrate the
judicial exception into a practical application. 84 Fed. Reg. 52–55.
Appellant argues that the claims are directed to an improvement to
computer functionality as opposed to being directed to an abstract idea that
merely is carried out by a general-purpose computer. Appeal Br. 7–8. More
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specifically, Appellant argues that the present invention goes beyond the
mere collecting, analyzing, and storing of data, as suggested by the
Examiner, and instead “describes a particular solution to a problem or a
particular way to achieve a desired outcome. Id. at 8. According to
Appellant, the invention improve[s] computer-related technology by
allowing computer performance of a function not previously performable by
a computer.” Id. at 8.
Appellant points to the following passage of the Specification’s
“Description of the Related Art” section as providing evidence that
“Appellants noted the inefficiencies and undeveloped nature of current drag
and drop techniques in object oriented programming:”
Predominately, [in pre-existing drag and drop operations,] a value
is established for a data member through the programmatic
invocation of a corresponding method member. However, drag
and drop techniques have been developed in which the value of a
data member of a target object is established by dragging and
dropping a different object onto the target object.
Spec. ¶ 6, cited in App. Br. 11.
Appellant then argues the invention provides improved computer
functionality, as follows:
The unique combination of steps defined by Appellants’ claims
address the foregoing problem by presenting a method that
automatically invokes a method member to update an attribute of
an object with the value of a different display region through
simply dragging and dropping of the object. Most importantly,
previous methodologies in existence prior to Appellants’
invention could not address the foregoing problem as evidenced
in Appellants’ originally presented specification.
Appeal Br. 12.
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Like Appellant, the Examiner also relies on the Specification’s
“Description of the Related Art” section, including the exact same passage,
to support the determination that “the techniques associated with this
classification [of data through the collecting, analyzing, and storing of the
data] such as detecting drag and drop events and associated values with
attributes of objects [was] well known in the art as admitted in Applicant’s
specification ¶0004–¶0006.” Final Act. 4.
We agree with Appellant (Appeal Br. 12) that the relied upon
paragraph 6 of the Specification explains that drag and drop operations were
known generally. And Appellant acknowledges that it was known to
establish a value for a data member through the programmatic invocation of
a corresponding method member. Id. at 11 (citing Spec. ¶ 6). But contrary
to the Examiner’s finding, we do not see where paragraph 6 or any other
portion of Appellant’s Specification acknowledges that it was known to
invoke a method member of an object to set the object’s attribute
specifically by identifying a value that corresponds to the region of the
display into which the object is dropped.
In summary, Appellant has provided support for the assertion that the
claims recite an improvement to the relevant computer technology. The
Examiner, on the other hand, has not provided a factual basis for
determining that Appellant’s claims merely recite computer functionality
that was well known.
For these reasons, Appellant persuades us that claims 1, 4, and 7 are
directed to an improvement in the functioning of a computer or to the
technical field of object oriented programming. MPEP § 2106.05(a).
Accordingly, Appellant has persuaded us that claims 1, 4, and 7 integrate the
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recited abstract ideas into a practical application within the meaning of the
2019 Guidance. 84 Fed. Reg. 52–55. We, therefore, do not sustain the
Examiner’s rejection of claims 1, 4, and 7 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.

35 U.S.C. § 103
The Rejections
Claims 1, 4, and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Yang (US 2010/0077333 A1; published March 25, 2010),
Hart (US 2012/0185800 A1; published July 19, 2012), and Lee Barney &
Michael McLaughlin, ORACLE DATABASE AJAX & PHP WEB
APPLICATION DEVELOPMENT, 2–20 (2008) (McGraw-Hill)
(hereinafter “Barney”). Final Act. 5–12.
Claims 1, 4, and 7 stand rejected under 35 U.S.C. § 103 over two
embodiments of Barney in combination with Prinsen (US 2007/0234227 A1;
published Oct. 4, 2007). Final Act. 13–19.
Claims 1, 4, and 7 stand rejected under 35 U.S.C. §103(a) as obvious
over Barney, Prinsen, and Fred Sauer, gwt-dnd Drag-and-Drop for Google-
Web-Toolkit (GWT), June 29, 2011, https://gwt-dnd.appspot.com (cited
project files from http://code.google.com, last visited Dec. 8, 2014, have
been preserved in the record) (hereinafter “Sauer”). Final Act. 19–25.
I.
THE FIRST REJECTION AND CONTENTIONS:
In relation to the obviousness rejection over Yang, Hart, and Barney,
the Examiner finds that Yang disclose a method for drag and drop
manipulation of object values that comprises (1) loading an attribute set for
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objects of an application, (2) selecting a particular one of the attributes,
(3) determining a value for the particular one of the attributes, (4) detecting a
drop event for an object in the GUI, (5) responding to the event by
identifying a display region of the GUI into which the object is dropped and
a corresponding value for the identified display region, and (6) setting the
attribute of the object with the corresponding value. Final Act. 5–6 (citing
Yang ¶¶ 33, 36–39, 41–44; FIGs 2A–2D).
The Examiner finds that Yang does not disclose positioning each one
of the objects in a region of the GUI associated with the value of the
attribute for the one of the objects. Final Act. 6. The Examiner finds that
Hart teaches various claim limitations including positioning each one of the
objects in a region of a GUI associated with a corresponding determined
value. Id. (citing Hart ¶¶ 29, 30, 33–37, 39, 56, 76, 77; FIG. 1A).
The Examiner reasons that one would have been motivated “to have
modified Yang to include a viewer [that] can arrange files based on the
values associated with a selected attribute based on the teachings of Hart”
because “doing so would have . . . provide[d] the user with a system for
navigating and manipulating large numbers of files with better visual
feedback allowing more efficient and faster retrieval or evaluation of user-
oriented information items.” Id. at 7.
The Examiner further finds that the combination of Yang and Hart
does not disclose invoking a method member of the object to set the attribute
of the object with the corresponding value. Id. The Examiner finds that
Barney teaches this functionality and that motivation existed to additionally
combine Barney’s teachings with those of Yang and Hart. Id.
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More specifically, the Examiner describes the additional reliance on
Barney as follows:
Barney teaches object manipulation techniques including
drag and drop (Barney, page 8, lines 21–22, drag-and-drop
library function makeDraggable acts on Element object
attributes),
invoking a method member of the object to set the attribute
of the object with the corresponding value (Barney, page 18,
lines 15–17 - example Pencil object has method member
eraseText[,] which sets attribute eraserPercentage, multiple other
examples exist on this page).
Therefore, at the time of the invention, it would have been
obvious to one of ordinary skill in the art to have modified the
object attribute modification of Yang as modified by Hart to use
a method member of the object to set the value of the attribute
based on the teachings of Barney. The motivation for doing so
would have been to obtain the modular code efficiency
associated with the use of methods in object oriented
programming (Barney, page 20).
Final Act. 7.
In response, Appellant argues, inter alia,
Essentially present in [each of the claims] is the response to a
drag and drop event by identifying a display region of the GUI
into which the object is dropped and a corresponding value for
the identified display region; and, invoking a method member of
the object to set the attribute of the object with the corresponding
value of the display region.
Appeal Br. 20, emphasis omitted.
Appellant continues,
Appellants have not professed to have invented the simple
invocation of a method. But, this critical claim limitation is more
complicated than a mere method invocation. The plain language
requires the invocation of the method of the object to set the
attribute of the object with the corresponding value for the
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display region following a drag and drop event. [In Barney, t]he
“color” value and the eraser size passed to the “Pencil” method
is not a corresponding value for the display region nor invoked
to set the attribute of the Pencil from a drag and drop event. . . .
The makeDraggable function only adds the “methods and
attributes” related to adding the ability to drag an object. The
makeDraggable function does not perform the Appellants’ claim
element of “invoking a method member of the object to set the
attribute of the object with the corresponding value” of the
display region[,] nor is the makeDraggable function even called
in the Pencil function on page 18 of Barney. Therefore, Barney
fails to even consider Appellants’ essential claim element of
“invoking a method member of the object to set the attribute of
the object with the corresponding value.”
Id. at 22–23.
Appellant summarizes by repeating this argument:
[T]he Examiner has omitted consideration of the essential
element of “invoking a method member of the object to set the
attribute of the object with the corresponding value” of the
display region. Instead, Examiner has only accounted for
invoking a method member of an object to set the attribute of the
object.
Id. at 23.
The Examiner subsequently confirms that Barney does not disclose
the disputed functionality, but explains that the rejection is based, instead, on
the teachings of the combined references:
In the first rejection (Yang/Hart/Barney, Office Action Pages 5–
12), the claim limitations corresponding to Appellant’s argument
[regarding the claim language] . . . “a corresponding value for the
identified display region” and “set the attribute of the object with
the corresponding value”[] are cited as disclosed in Yang rather
than Barney. The cited embodiment of Barney discloses
invoking a method member to set a value. In turn, Yang
discloses setting the object with the attribute value corresponding
to the display region (Yang, ¶0041–¶0043 with Figs. 2A–2D -
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icons 212, 213, and 214 representing attributes and encompass
regions on the [sic] and ¶0044 – user may drop the file in a drag
and drop operation onto the attribute icon (region)).
Ans. 7.
ANALYSIS:
The cited references arguably may teach all of the individual claim
elements, but only when these elements are viewed in isolation. The
Examiner has not set forth a sufficient explanation for why one of ordinary
skill in the art would have been motivated to combine the teachings so as to
provide the response-dependent functionalities, as claimed. That is, the
Examiner has not sufficiently explained why one of ordinary skill would
have combined the cited references so as to cause the system to respond to a
drag and drop event by identifying a display region of the GUI into which
the object is dropped and a corresponding value for the identified display
region; and then invoke a method member of the object to set the attribute of
the object with the corresponding value of the display region.
The rejection, instead, appears to be a result of the Examiner
impermissibly using information gleaned only from Appellant’s claims as a
roadmap. See In re McLaughlin, 443 F.2d 1392, 1395, (CCPA 1971)
(explaining that an obviousness rejection based upon hindsight reasoning is
improper when the rejection is based upon information gleaned only from an
applicant’s disclosure).
Accordingly, we do not sustain the obviousness rejection of
claims 1, 4, and 7 over the combination of Yang, Hart, and Barney.
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II.
THE SECOND AND THIRD OBVIOUSNESS REJECTIONS AND CONTENTIONS:
For the rejection over Barney and Prinsen (Final Act. 13–19),
the Examiner relies on Barney’s drag and drop library function,
makeDraggable, as well as the onmousemove code, for teaching the
steps of loading and selecting an attribute, positioning the objects in
the GUI, detecting a drop event, and responding to the event by
setting an attribute of the object with the corresponding value. Id. at
13–14 (citing Barney 8:18–20, 8:21–22, 12:45–70, 12:74, 13:6–21).
The Examiner relies on Prinsen for teaching a drag-and-drop
manipulation of a set of objects wherein the user performs a single
drag-and-drop operation on multiple items. Id. at 14 (citing Prinsen
¶ 35; FIG. 2). The stated motivation for modifying Barney’s drag-
and-drop method with Prinsen’s teachings is “to enable a collective
operation using multiple selected items to be performed, thereby
improving user interface efficiency.” Id. (citing Prinsen ¶ 2).
The Examiner relies on Barney’s disclosure of the Pencil object
and method member eraseText, as discussed in the preceding
rejection, for teaching “an object whose attributes are set by a method
member of the object.” Id. (citing Barney 18:15–17). The stated
motivation for modifying Barney’s draggable object attribute setting
method, as already modified by Prinsen, is “to obtain the modular
code efficiency associated with the use of methods in object oriented
programming.” Id. at 15 (citing Barney 20).
The third obviousness rejection over Barney, Prinsen, and
Sauer, relies on Barney and Prinsen in a manner that is similar to that
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of the second rejection. Final Act. 19–21. The Examiner relies on
Sauer for “teach[ing] a draggable object whose dragged attributes are
set by a method member of the object.” Final Act. 21. The stated
motivation to the object attribute setting method of Barney and
Prinsen is “to obtain the modular code efficiency associated with the
use of methods in object oriented programming.” Id.
In the Examiner’s Answer mailed August 10, 2018 (“Ans.”),
the Examiner also further clarifies the rationale underlying the second
and third rejections:
In the second and third of the multiple parallel rejections of
the claims (Barney/Prinsen/second embodiment of Barney at
Office action Pages 13–19; and Barney/Prinsen/Sauer at
Pages 19–25, respectively), the claim limitations corresponding
to [Appellant’s argument] (specifically “a corresponding value
for the identified display region” and “set the attribute of the
object with the corresponding value”) are cited as disclosed in a
different embodiment of Barney. In these rejections, it is the
mouse movement dragging of the icon in Barney that discloses
setting the object with the attribute value corresponding to the
display region (Barney, Page 12, lines 45–47 – onmousemove
updates the position of the object, and Page 12, line 74[,] and page
13[,] lines 6–21 - onmouseup terminates dragging).
Ans. 7–8.
Appellant presents arguments regarding the second and third
obviousness rejections that are similar to the arguments raised in relation to
the first rejection. Appeal Br. 22–26. These arguments can be summarized,
as follows:
In both rejections, not only do Sauer or Barney not
disclose Appellants’ essential claim element, it would not have
been obvious to combine Sauer or Barney to the other references
because the plain source code in Sauer or Barney would not
supply the functionality required to teach Appellants’ claimed
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invention. Examiner’s flawed, piecemeal approach to attempt to
teach Appellants’ claimed invention cannot be used as a prima
facie case of obviousness under the law.
Id. at 26.
ANALYSIS:
Appellant’s arguments regarding the piecemeal nature of the second
and third rejections are persuasive for reasons similar to those explained in
relation to the first rejection over the combination of Yang, Hart, and
Barney. Accordingly, we do not sustain the obviousness rejections of
claims 1, 4, and 7 over either of the combination of Barney and Prinsen or
the combination of Barney, Prinsen, and Sauer.

CONCLUSION
In summary:

REVERSED

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 4, 7 112(b) Indefiniteness 1, 4, 7
1, 4, 7 101 Eligibility 1, 4, 7
1, 4, 7 103 Yang, Hart,
Barney
1, 4, 7
1, 4, 7 103 Barney, Prinsen 1, 4, 7
1, 4, 7 103 Barney, Prinsen,
Sauer
1, 4, 7
Overall
Outcome
1, 4, 7