Ex Parte Petersen

Board of Patent Appeals and Interferences

Feb 23, 2009

10236610 (B.P.A.I. Feb. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SCOTT E. PETERSEN
____________________

Appeal 2008-2535
Application 10/236,6101
Technology Center 2100
____________________

Decided:2 February 23, 2009
____________________

Before: HOWARD B. BLANKENSHIP, JAY P. LUCAS, and
STEPHEN C. SIU, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed September 5, 2002. The real party in interest is Adobe
Systems, Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF CASE
Appellant appeals from a final rejection of claims 1 to 4, 6, 7, 9 to 16,
18 to 21, 23, 24, and 26 to 55 under authority of 35 U.S.C. § 134. The
Board of Patent Appeals and Interferences (BPAI) has jurisdiction under 35
U.S.C. § 6(b). Claims 5, 8, 17, 22, and 25 are cancelled.
Appellant’s invention relates to an improved method for placing input
fields into an electronic document. In the words of the Appellant:
The invention provides methods and apparatus, including
computer program apparatus for generating input fields in an
electronic document. Different types of input fields include form
fields, sketch fields, text fields, and the like.

In general, in one aspect, the invention features computer-
implemented methods and apparatus, including computer program
apparatus, implementing techniques for generating input fields in an
electronic document. The techniques include representing an
electronic document to a user, receiving user input specifying a
location in the electronic document, identifying one or more graphical
elements in the electronic document, and generating an input field in
the electronic document at the specified location based at least in part
on the identified graphical elements.

(Spec. 3, ll. 2-11).
Claim 1 is exemplary:
1. A computer-implemented method, comprising:
representing an electronic document to a user, the electronic document
having one or more graphical elements, each graphical element being
either text, line art, or an image;
receiving user input specifying a location in the electronic
document; and
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determining whether an existing input field already exists in the
electronic document at the location and if an existing input field does
not already exist at the location, then, in response to the user input
specifying a location,
defining an area in the electronic document at the
location, wherein defining the area comprises identifying one or
more graphical elements and using the identified graphical
elements to define the area; and
generating a new input field in the area.

PRIOR ART
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sugiyama 5,616,905 Apr. 1, 1997
Turpin 5,742,836 Apr. 21, 1998
Lee 2003/0115025 A1 Jun. 19, 2003

Gini Courter, et al., Mastering Microsoft Office 2000 Professional
Edition, 232 (Sybex, 1999) (hereinafter “Courter”).

Judy Duncan, SQL Windows Development Tools, InfoWorld vol. 14
no. 12, at 75-87 (Jan. 13, 1992) (hereinafter “Duncan”).

Ted Padova, Acrobat PDF Bible, 385-423 (John Wiley & Sons, 1999)
(hereinafter “Padova”).

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REJECTIONS
R1: Claims 50 and 55 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite, for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
R2: Claims 1 to 4, 6, 9 to 16, 18 to 21, 23, 26 to 34, 44, 49, 50, 54,
and 55 stand rejected under 35 U.S.C. § 103 for being obvious over Padova
and Duncan in view of Turpin and Lee.
R3: Claims 7, 24, 38, and 39 stand rejected under 35 U.S.C. §
103(a) for being obvious over Padova and Duncan in view of Turpin and
Lee and further in view of Courter.
R4: Claims 35 to 37, 40 to 43, 45 to 48, and 51 to 53 stand rejected
under 35 U.S.C. § 103(a) for being obvious over Padova and Duncan in
view of Turpin and Lee and Courter and further in view of Sugiyama.

Groups of Claims:
The claims will be discussed in the order of Appellant’s arguments in
the Brief.
Appellant contends that the subject matter is not claimed in an
indefinite manner and is not rendered obvious by any combination of the
references, for failure of the references to disclose key limitations. The
Examiner contends that each of the claims is properly rejected.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Brief and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
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this opinion. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.

We affirm-in-part.
ISSUE
The first issue is whether Appellant has shown that the Examiner
erred in rejecting the claims under 35 U.S.C. § 112, second paragraph. The
issue turns on whether the phrase, in claims 50 and 55, “detecting . . . a
rectangle, and defining the area as substantially equal to the rectangle” is
indefinite.
The second issue is whether Appellant has shown that the Examiner
erred in rejecting the claims under 35 U.S.C. § 103. This issue turns on the
presence of certain claimed limitations, discussed in the analysis section
below, in the respective references as rejected in R2 – R4.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a method, and a computer program on a
computer readable memory, (hereinafter, “method”) for generating input
fields in an electronic document, such as one rendered in the standard
Portable Document Format (PDF) developed by the assignee. (Spec. 1, l.
24). The improved method has a number of different features: the new
field may be created when the document is in authoring mode by an
author; or in fill-in mode by a reader. (Id. at 3, l. 17). The input field may
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be defined by the existing graphical element surrounding the selected
area. (Id. at 3, l. 27). The system checks if an existing input field is in a
user selected location, and if not, proceeds to place one there. (Id. at 7, l.
3). It avoids other graphical elements in the area. (Id. at 8, l. 6). The
potential new input box can expand to include the area bounded by other
graphical elements. (Id. at 10, l. 2). Data entered into the input field may,
of course, be stored. (Id. at 9, l. 2).
2. The Examiner’s Padova reference is an excerpt from the Acrobat PDF
Bible as noted above. It teaches how users of Adobe Acrobat software
can add input fields of many types to PDF documents. (p. 386 generally).
Padova teaches that form fields, including input fields, can “snap to the
gridlines” on the document being created. (p. 389, top). The methods of
establishing various properties of the input fields are explained
throughout the reference.
3. Turpin teaches a system and method for creating electronic forms
containing input fields. (Abstract). The reference teaches a Form Tool
which can draw input boxes of various sizes that share borders for
adjacent regions. (Col. 19, l. 21). These boxes can be selected, moved
and sized by the form tool. (Id., l. 65). Figures 18, 19 and 20 illustrate a
feature in Turpin whereby input (check) boxes are automatically fitted to
the blank space allotted to the box, and the input check boxes are
arranged horizontally, vertically or in a pop-up window depending on the
space available for the box. (Col. 20, l. 18-44).
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4. Lee is cited by the Examiner for teaching that it is old in the art for a
system to distinguish between screen information that is merely for
display, and an input box that accepts user input of data. (¶ [0027]).
PRINCIPLES OF LAW
Appellants have the burden 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 [under § 103] 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)).
“In reviewing the examiner’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 1740.
It is “common sense . . . that familiar items may have obvious uses
beyond their primary purposes, and . . . a person of ordinary skill often will
be able to fit the teachings of multiple patents together like pieces of a
puzzle.” Id. at 1742.

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ANALYSIS
From our review of the administrative record, we find that Examiner
has presented a prima facie case for the rejections of Appellant’s claims
under 35 U.S.C. § 112, second paragraph, and 35 U.S.C. § 103(a). The
prima facie case is presented on pages 4 to 20 of the Examiner’s Answer. In
opposition, Appellant presents a number of arguments.

Arguments with respect to the rejection
of claims 50 to 55
under 35 U.S.C. § 112 para. 2 [R1]

Appellant’s first argument addresses the issue of whether claims 50
and 55 are indefinite. The phrase in question reads “defining an area
comprises detecting in the one or more graphical elements a rectangle, and
defining the area as substantially equal to the rectangle.”
The Examiner has indicated “[t]he term ‘substantially equal’ in claim
50 is a relative term which renders the claim indefinite” and
“[c]onsequently, the comparison between the defined area and the rectangle
has been rendered indefinite and will not be considered for examination at
this time.” (Answer 3).
Appellant has cited several Federal Circuit cases in which the term
“substantially” has appeared. (Brief 6). In Andrew Corp. v. Gabriel Elects.
Inc., 847 F.2d 819 (Fed Cir. 1988) the court was construing the phrase
“antenna . . . which produces substantially equal E and H plane illumination
patterns.” Specifically, two illumination patterns were being compared, and
the court found that one of ordinary skill in that art would appreciate what
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was meant by “substantially equal”. In Insituform Technologies Inc v. Cat
Contracting Inc., 99 F.3d 1098 (Fed. Cir. 1996) the court was interpreting
the term “the outer layer of the tube being substantially impermeable to air.”
The court found that one of ordinary skill could determine the amount of
leakage that could be tolerated while still calling the layer “substantially
impermeable”. Both of these cases are distinguished from the present
situation. The limitation in question in the instant application does not
present a problem of degree of equality, or degree of a quality, but rather the
problem of comparing an apple to an orange. More specifically, in the claim
an “area” is said to be substantially equal to a “shape”, a rectangle. Did the
Appellant mean the defined area is substantially equal to the area of the
rectangle? Or the shape of the rectangle? Or the position of the rectangle?
Or all of these qualities? The claims are amenable to multiple
interpretations. See Ex Parte Miyazaki, Appeal 2007-3300 (precedential)
(USPTO Brd. Pat. App. Int., Nov. 19, 2008).
In view of this lack of clarity, we decline finding error in the
Examiner’s rejection under 35 U.S.C. § 112, second paragraph.

Arguments with respect to the rejection
of claims 1 to 4, 6, 9 to 16, 18 to 21, 23, 26 to 34, 44, 49, 50, 54, and 55
under 35 U.S.C. § 103 [R2]

The Examiner has rejected claims 1 to 4, 6, 9 to 16, 18 to 21, 23, 26 to
34, 44, 49, 50, 54, and 55 under 35 U.S.C. § 103 for being obvious over
Padova and Duncan in view of Turpin and Lee. Appellant has presented a
number of arguments.
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Appellant first argues that the combination of references do not teach
or suggest determining whether an input field already exists in an electronic
document at a user specified location, and generating a new input field in an
area defined by one or more graphical elements. (Brief 9, middle). The
Examiner points to Lee, which we find does distinguish between an input
field and mere decoration. (Answer 20, bottom). However, this part of the
rejection must be considered in the context of the other references, most
notably Turpin. In Turpin, the user of the Form Tool indicates an area to
place a box, and the system then places that box in that area. (Col. 19, l. 58
ff; Fig. 18). Note in Turpin, the borders for the various boxes are shared;
thus the boxes do not overlap. (Col. 19, l. 21; Fig. 18). Turpin and Lee
teach that it is known in the prior art to determine the nature of an existing
box, (Lee, ¶ [0027]; Turpin, Col 19, l. 44), and the latter reference teaches
the placement of an input field in an empty area on the document (Col. 20, l.
19). We thus do not find persuasive Appellant’s argument that the Examiner
erred.
Concerning claim 4, Appellant argues that the Padova reference, cited
by the Examiner for the teaching of creating an input field while in the form
fill mode, does not teach that limitation but rather teaches away from that
feature. (Brief 10, middle). Considering the Padova and other references
closely, we do not find the Examiner’s substantiation for his rejection. As
the Examiner points out, the referenced part of the Padova book is entitled
Creating Forms. (Answer 24, middle). However, there is no recitation that
the user can “enter information into input fields in the electronic document”
as claimed, during the form creation mode, in the Padova reference or in the
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other Examiner cited documents. We thus find that the Appellant has found
error in the Examiner’s rejection, for this claim and for claims 21 and 34,
which contain similar limitations.
Concerning claim 10, Appellant argues that Padova and the other
references do not teach “determining the boundary of a form field based on
one or more graphical elements that represent text in the electronic
document.” (Brief 10, bottom) (underlining omitted). Appellant further
argues, concerning claim 14, that Padova does not teach expanding a
perimeter until one of its edges intersects other graphical elements. (Id. at
11, middle). We find that Turpin, in the sections cited above (FF #3), does
teach the determination of a boundary of a new input field based on, and
expanding to be delimited by, neighboring graphical elements such as those
found in Fig. 18 of the reference (e.g. the box labeled “Date of First Annuity
Payment). As noted in the Findings above, the input field in Turpin provides
a basis for the Examiner’s rejection. We do not find error with the
Examiner’s rejection over the cited art.

Arguments with respect to the rejection
of claims 7, 24, 38, and 39
under 35 U.S.C. § 103 [R3]

Claims 7, 24, 38, and 39 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Padova and Duncan in view of Turpin and Lee and
further in view of Courter. Appellant contends, with regard to representative
claim 7, that the reference Courter fails to remedy the deficiencies of the
first four references. (Brief 11, bottom).
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In view of the reasoning expressed above for the application of the
teachings of the Padova and Turpin references, we decline to find error in
the rejection.

Arguments with respect to the rejection
of claims 35 to 37, 40 to 43, 45 to 48, and 51 to 53
under 35 U.S.C. § 103 [R4]

Claims 35 to 37, 40 to 43, 45 to 48, and 51 to 53 were rejected under
35 U.S.C. § 103(a) for being obvious over Padova and Duncan in view of
Turpin and Lee and Courter and further in view of Sugiyama.
Appellant contends that Examiner erred in rejecting exemplary claim
35 because the Sugiyama reference fails to determine whether the bounding
straight lines intersect other graphical elements. (Brief 12, bottom).
The Examiner makes it clear that Sugiyama was cited for the
application of the electronic document teachings of the other references to
the related field of raster (screen) images, and for its teaching of the claimed
Hough transform. (Answer 29, top). The limitation cited by the Appellant
has been discussed above as being taught by the other references, most
notably Turpin. In view of that discussion, we fail to find error in the
Examiner’s rejection R4 of the relevant claims.
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claims 4, 21 and 34. We did not find error in
the rejection of all the other claims in R1, R2, R3 or R4.

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DECISION
We decide as follows:
R1: The rejection of claims 50 and 55 under 35 U.S.C. § 112,
second paragraph, for being indefinite, for failing to particularly point out
and distinctly claim the subject matter which Appellant regards as the
invention is Affirmed.
R2a: The rejection of claims 1 to 3, 6, 9 to 16, 18 to 20, 23, 26 to 33,
44, 49, 50, 54, and 55 under 35 U.S.C. § 103 for being obvious over Padova
and Duncan in view of Turpin and Lee is Affirmed.
R2b: The rejection of claims 4, 21, and 34 is Reversed.
R3: The rejection of claims 7, 24, 38, and 39 under 35 U.S.C. §
103(a) for being obvious over Padova and Duncan in view of Turpin and
Lee and further in view of Courter is Affirmed.
R4: The rejection of claims 35 to 37, 40 to 43, 45 to 48, and 51 to
53 under 35 U.S.C. § 103(a) for being obvious over Padova and Duncan in
view of Turpin and Lee and Courter and further in view of Sugiyama 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)(iv).

AFFIRMED-IN-PART

msc

FISH & RICHARDSON P.C.
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