Ex Parte Haase

Board of Patent Appeals and Interferences

May 25, 2012

10628142 (B.P.A.I. May. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte IGNATIUS XAVIER HAASE
____________________

Appeal 2010-001821
Application 10/628,142
Technology Center 2100
____________________

Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
JOHN A. JEFFERY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001821
Application 10/628,142
2
STATEMENT OF CASE
The Patent Examiner rejected claims 1, 3, 5, 7, 8, 13, and 17-20. The
Appellant appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b).

INVENTION
Claim 1, which follows, is illustrative of the claimed subject matter.
1. A method of encoding a document comprising the
steps of:
identifying multiple characteristics about text of the
document;
creating a key for correlating the multiple characteristics
with multiple unique indicia; and
placing at least some of the unique indicia adjacent at
least some lines of text in the document, wherein the unique
indicia placed adjacent each line of text correspond to the
characteristic or characteristics in the line of text on the basis of
the key, wherein there is at least one line of text having at least
two unique indicia adjacent thereto, wherein in the steps of
creating and placing, the unique indicia comprise color-coded
segments, and the color-coded segments are placed in a margin
adjacent to and in line with the text of the line, and wherein
there are at least some color-coded segments placed
contiguously with the same color-coded segments from
adjacent lines of text and in a columnar arrangement
perpendicular to the lines of text, so as to form continuous
segments of color-coding, and at least some lines of text have at
least two characteristics and a corresponding number of unique
indicia in the margin adjacent the lines.

REFERENCE AND REJECTION
Rivette US 5,623,679 Apr. 22, 1997
Appeal 2010-001821
Application 10/628,142
3

Claims 1, 3, 5, 7, 8, 13, and 17-20 stand rejected under 35 U.S.C
§102(b) as being anticipated by Rivette.

DISCUSSION
Based on the dependencies of the claims, we will decide the appeal of
claims 1, 3, 5, 7, 8, 13, and 17-20 on the basis of independent claims 1, 7,
and 13. Therefore, the issue before us follows.
Did the Examiner err in finding that Rivette discloses "color-coded
segments placed contiguously with the same color-coded segments from
adjacent lines of text and in a columnar arrangement perpendicular to the
lines of text, so as to form continuous segments of color-coding," as required
by independent claims 1, 7, and 13?
"The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not . . . resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies in its factual basis." In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Here, the Examiner finds makes the following findings.
Rivette allows for the creation of multiple, even overlapping
highlights for a given patent text line producing multiple
adjacent symbols (see col. 37, lines 13-21). Each of the
multiple highlights can be made with a different color
producing a row of symbols of different kinds and colors.
Since a user can perform this function on a single line
of patent text, then they [sic] can also implicitly (note: not
illustrated by Rivette) perform it for multiple lines of text,
even those which are consecutive. Performing this function
on consecutive lines of patent text, such as that illustrated in
at least Figures 37 and 63, would produce contiguous color-
coded elements from adjacent lines of text.
Appeal 2010-001821
Application 10/628,142
4
(Ans. 11-12.)
We agree with the Appellant, however, that "there is absolutely no
reason, suggestion, or common sense indication that one would make the
color indicators run contiguously or continuously down a column in the
margin." (Reply Br. 4-5.) The Examiner admits that Rivette does not show
the limitations at issue. His finding that "[p]erforming this function on
consecutive lines of patent text . . . would produce contiguous color-coded
elements from adjacent lines of text" (Ans. 12) amounts to speculation or
unfounded assumptions, which cannot be used to supply deficiencies in the
reference's factual basis
Therefore, we conclude that the Examiner erred in finding that Rivette
discloses "color-coded segments placed contiguously with the same color-
coded segments from adjacent lines of text and in a columnar arrangement
perpendicular to the lines of text, so as to form continuous segments of
color-coding," as required by independent claims 1, 7, and 13. We reach the
same conclusion regarding the dependent claims.

DECISION
We reverse the rejection of claims 1, 3, 5, 7, 8, 13, and 17-20.

REVERSED

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