Samuel Radakovitz et al.

Patent Trials and Appeals Board

Sep 2, 2021

2020002565 (P.T.A.B. Sep. 2, 2021)

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.
12/770,992 04/30/2010 Samuel Chow Radakovitz 329218-US-NP/170101-600 1752
145266 7590 09/02/2021
NovoTechIP International PLLC
1717 Pennsylvania Ave. NW
Suite #1025
Washington, DC 20006
EXAMINER
FABER, DAVID
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
09/02/2021 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):
akhlaghi@novotechip.com
docketing@novotechip.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SAMUEL CHOW RADAKOVITZ and BRIAN SCOTT RUBLE

Appeal 2020-002565
Application 12/770,992
Technology Center 2100
____________

Before MARC S. HOFF, JOHN A. EVANS, and JUSTIN BUSCH,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final decision to reject Claims 1–19 and 21. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM IN PART.2

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Microsoft Technology Licensing,
LLC, as the real party in interest. Appeal Br. 4.
2 Throughout this Decision, we refer to the Appeal Brief filed November 4,
2019 (“Appeal Br.”); the Reply Brief filed February 12, 2020 (“Reply Br.”);
the Final Office Action mailed July 3, 2019 (“Final Act.”); the Examiner’s
Answer mailed December 12, 2019 (“Ans.”); and the Specification filed
April 12, 2011 (“Spec.”).
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STATEMENT OF THE CASE
CLAIMED SUBJECT MATTER
The claims relate to systems and methods for automatic formatting
and charting of user-selected data. See Abstract.

CLAIMS
Claims 1, 9, and 17 are independent. Claim 1 is illustrative and
reproduced below:
1. A method for temporarily formatting and charting data,
comprising:
receiving a user selection of a portion of data from rows
and columns of data that is currently displayed within a window
of a productivity application on a display;
in response to the user selection of the portion of data,
automatically formatting and creating a chart without receiving
a selection of a charting option, comprising:
determining values within the selected data;
automatically determining a single chart type
based on the selected data; and
automatically creating a chart of the single chart
type;
displaying the chart representing the values from the selected
data in the window from which the portion of data is selected;
receiving user interactions with the chart; and
in response to determining that the user has completed
interacting with the chart, removing the chart from the window.

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PRIOR ART

Name3 Reference Date
Kahn US 5,461,708 Oct. 24, 1995
Koren US 2002/0194095 A1 Dec. 19, 2002
MacGregor US 2008/0082908 A1 Apr. 3, 2008

Greg Harvey, “Microsoft Office Excel 2007 For Dummies,” (2007)
(“Harvey”).
Greg Harvey, “Hiding Graphic Objects in Excel 2007,” 2 pages (“Greg
Harvey”).
Josh Wilson, “Excel 2003: Charting, Learning Guide,” Tufts University ITS,
(5/4/2006).
Benjamin, “Change chart colors based on value?,” mrexcel.com forums
(May 21, 2007).
PCreview, “Sorting in an Excel Chart won't work properly” (“PCreview”).

REJECTION4 AT ISSUE
1. Claims 1, 9, 17, and 21 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Kahn, MacGregor, and
Harvey.5 Final Act. 3–8.
2. Claims 2, 3, 6, 10, 11, 14, and 18 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Kahn, MacGregor,

3 All citations herein to the references are by reference to the first named
inventor/author only.
4 The present application is being examined under the pre-AIA first to
invent provisions. Final Act. 3.
5 The Examiner cites Greg Harvey as extrinsic evidence of the visual
appearance of the Selection and Visibility pane. Final Act. 3.
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Harvey, and Koren.6 Final Act. 8–9.
3. Claims 4, 5, 13, and 19 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Kahn, MacGregor, Harvey,
Koren, and Wilson. Final Act. 9–10.
4. Claims 7, 8, 15, and 16 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Kahn, MacGregor, Harvey,
Koren, and Benjamin. Final Act. 10–11.
5. Claim 12 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Kahn, MacGregor, Harvey, Koren, and
PCreview. Final Act. 11.

ANALYSIS
We have reviewed the rejection of Claims 1–19 and 21 in light of
Appellant’s arguments that the Examiner erred. We have considered in this
Decision only those arguments Appellant actually raised in the Brief. Any
other arguments which Appellant could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We
are not persuaded that Appellant identify reversible error.
Upon consideration of the arguments presented in the Appeal Brief
and the Reply Brief, we agree with the Examiner that all the pending claims
are unpatentable under 35 U.S.C. § 103. We adopt as our own the findings
and reasons set forth in the rejections from which this appeal is taken and in

6 The rejection recites “Korean.” We find this to be a harmless, typographic
error. Final Act. 8.

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the Examiner’s Answer, to the extent consistent with our analysis below.
We provide the following explanation to highlight and address specific
arguments and findings primarily for emphasis. We consider Appellant’s
arguments as they are presented in the Appeal and Reply Briefs.

CLAIMS 1, 9, 17, AND 21: OBVIOUSNESS OVER KAHN,
MACGREGOR, AND HARVEY.
Appellant argues the combination of Kahn, MacGregor, and Harvey
fails to render obvious independent Claims 1, 9, and 17. Appeal Br. 23
(“Independent claims 9 and 17 recite elements similar to independent claim
1, except in storage medium and system form, and these claims have been
rejected under the same basis as independent claim 1”). Therefore, we
decide the appeal of the § 103 rejections on the basis of Claim 1 and refer to
the rejected claims collectively herein as “the claims.” See 37 C.F.R.
§ 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Claim 1 recites, inter alia, “in response to the user selection of the
portion of data, automatically formatting and creating a chart without
receiving a selection of a charting option.” Claim 1, Appeal Br. 41.
Independent Claims 9 and 17 recite commensurate limitations.
The Examiner finds Kahn teaches that a “chart is automatically
created after the user selects data, selects a button and selects the desired
location for placement of the to-be-created chart.” Final Act. 3 (citing Figs.
6A–B; col 12, ll. 25–40). The Examiner finds the chart is formatted based
on an automatically selected chart type. Id. at 4. The Examiner finds the
user “selects a button,” but does not present a finding as to what the “button”
may relate. Final Act. 3.
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However, having presented findings showing Kahn teaches
automatically selecting a chart type, as discussed above, the Examiner then
finds Kahn substantially teaches the invention except Kahn fails to teach
automatically formatting and creating a chart “in response to . . . the user
selection of the portion of data” (i.e.,without receiving a selection of a
charting option), as recited in claim 1. Final Act. 4. The Examiner finds
MacGregor teaches this limitation. Id.
Appellant contends the Examiner misrepresents the claims and fails to
address the introductory phrase “in response to the user selection of the
portion of data.” Appeal Br. 10. This is incorrect. The Examiner finds that,
although “Kahn fails to specifically disclose” this feature, MacGregor
teaches this feature. Final Act. 4–5 (emphasis added). Appellant further
contends Kahn requires the user to select the graph tool 223 charting option
and to select a destination for the chart to actually trigger the display of a
chart of the data. Id. at 10–11. Appellant argues Kahn teaches creating a
chart is a manual, multi-step process performed by the user. Id. at 11 (citing
Kahn, Fig. 2B; Fig. 6B; col. 12, ll. 30–39, 50–67).
Appellant acknowledges MacGregor automatically generates a default
chart based on a default value. Appeal Br. 12. Appellant then argues a
default selection is: “in contrast to the technique recited in these claims of
automatically determining a chart type based solely on the selected data.”
Id. Appellant admits MacGregor discloses that a “data chart based on the
data selection is automatically generated,” but argues the disclosure “is silent
regarding the actual chart type that is used, and certainly lacks the express
disclosure that a chart type is determined solely on the selected data.” Id. at
13.
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The Examiner finds:
In response to applicant’s argument that the references
fail to show certain features of applicant’s invention, it is noted
that the features upon which applicant relies (i.e., technique
recited in the claims of the type of the chart being determined
automatically based solely on the selected data) are not recited
in the rejected claim(s).
Ans. 6. The Examiner further finds:
the language of the “automatically determining chart type based
on the selected data” (in response to user selection of data), the
language does not explicitly state that the chart type being
determined IS SOLELY on the selected data. The claimed
language states BASED ON the selected data. Therefore, the
chart type determined is not limited on only using the selected
data.
Id. at 7. The Examiner finds the claims permit the selection of chart type to
be “based on” many factors, at least one of which must be the selected data.
Id. The Examiner finds the claims are silent on the meaning of “based on
the selected data” and that it is unclear how “the selected data” is used to
determine a claim chart. Id.
Appellant responds:
the Answer appears to rely on the assertion that the claim
language fails to explain how exactly particular functions are
performed. Applicant respectfully submits that a lack of “how”
is no basis for sustaining a rejection under Section 103. See
Koninklijke KPN N.V. v. Glemalto M2M GmbH, 2019 U.S.
App. LEXIS 34075, at *18 (Fed. Cir. 2019) (a claim that is
directed to improving the functionality of part of an existing
system does not necessarily need to recite how that tool is
applied to the overall system). Further, any assertions of
indefiniteness, are not properly part of a prima facie case under
Section 103.
Reply Br. 4–5.
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As Appellant admits, MacGregor automatically generates a default
chart based on a default value (see Appeal Br. 12), but argues the disclosure
“is silent regarding the actual chart type that is used, and certainly lacks the
express disclosure that a chart type is determined solely on the selected
data.” Appeal Br. 13.
Appellant’s argument is not commensurate in scope with the claims
which do not recite a specific “chart type.” See In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because
. . . they are not based on limitations appearing in the claims”). In view of
the foregoing, we are not persuaded the Examiner errs.
CLAIMS 2, 3, 6, 10, 11, 14, AND 18: OBVIOUSNESS OVER KAHN,
MACGREGOR, HARVEY, AND KOREN.
Appellant argues, inter alia, these claims are patentable in view of
their dependence from independent Claims 1, 9, and 17. Appeal Br. 24.
As discussed above, we are not persuaded the Examiner errs with
respect to the independent claims.
Dependent Claims 3, 10, and 18.
Dependent Claims 3, 10, and 18 recite, inter alia, “displaying each
separate chart using a common axis,” which the Examiner found is taught by
Koren. Final Act. 8 (citing Koren, Fig. 45D; ¶¶ 189–192).
Appellant contends Charts 45A–45F of Koren fail to disclose a
common axis. Appeal Br. 25.
We disagree with Appellant and find the various charts of Figure 45
share at least a common y-axis. We further note the charts of Figure 19 of
Koren share a common x-axis.
Dependent Claims 6 and 14.
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Dependent Claims 6 and 14 recite, inter alia, “determining labels for
the charts by traversing the data until the labels are reached within the data
from which the data is selected,” for which the Examiner finds is taught by
Kahn. Final Act. 4 (citing Kahn, Fig. 6B). Appellant contends Kahn
discloses “the legend labels are obtained from the cells surrounding the
selected data, not from within the selected data.” Appeal Br. 25.
We disagree with Appellant because our comparison of the cells
containing numerical data and data labels in Appellant’s Figure 3 against
Kahn’s Figure 6B fails to reveal a material distinction.
Dependent Claim 11.
Dependent Claim 11 recites, inter alia, “removing a display of
unselected data in the window upon the temporary display of the chart,” for
which the Examiner cites Kahn and Harvey. Final Act. 9 (citing Kahn, col.
10, ll. 26–34; Harvey, Figs. 10-1, 10-3).
We agree with Appellant. The cited portions of both Kahn and
Harvey show certain data are highlighted to for a chart, whereas the
unselected data continue to be displayed. We, therefore decline to sustain
the rejection of Claim 11.

CLAIMS 4, 5, 13, AND 19: OBVIOUSNESS OVER KAHN,
MACGREGOR, HARVEY, KOREN, AND WILSON.
Appellant argues, inter alia, these claims are patentable in view of
their dependence from independent Claims 1, 9, and 17. Appeal Br. 26.
As discussed above, we are not persuaded the Examiner errs with
respect to the independent claims.
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Dependent Claims 5 and 13.
Dependent Claims 5 and 13 recite, inter alia, “comparing the value of
the point that is navigated to each of the other displayed charts and providing
an indication of a difference of the values between the charts,” for which the
Examiner cites Wilson. Final Act. 10 (citing Wilson, 8).
Appellant contends: “Wilson is completely silent regarding displaying
more than one value, much less comparing the value of a point to each of
other displayed charts and providing an indication of a difference of the
values between the charts.” Appeal Br. 27.
We agree with Appellant. Wilson discloses:
Whenever you place your mouse over a chart element, Excel
will temporarily display information about that element in a
yellow box that hovers over your chart. Use this technique to
discover the value of a data point, learn more about a data
series, or to easily identify a chart element.
Wilson, 8. We find no disclosure “providing an indication of a difference of
the values between the charts,” as argued. We do not sustain the rejection of
Claims 5 and 13.
CLAIMS 7, 8, 15, AND 16: OBVIOUSNESS OVER KAHN,
MACGREGOR, HARVEY, KOREN, AND BENJAMIN.
Appellant argues, inter alia, these claims are patentable in view of
their dependence from independent Claims 1, 9, and 17. Appeal Br. 28.
As discussed above, we are not persuaded the Examiner errs with
respect to the independent claims.
Dependent Claims 7 and 15.
Dependent Claims 7 and 15 recite, inter alia, “displaying a reference
line across the charts and formatting values in relation to a value of the
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reference line,” for which the Examiner cites Kahn. Final Act. 10 (citing
Kahn, Fig. 6C) (“horizontal reference lines from vertical axis values”).
Appellant contends:
The Office Action cites to Benjamin at post #2, on pages 1-2, as
allegedly disclosing this claim feature. The cited portion of
Wilson is completely silent regarding displaying any reference
line, much less formatting values in relation to a value of the
reference line.
Appeal Br. 29 (emphasis added).
Because Appellant mischaracterizes the rejection, we are not
persuaded of error.
Dependent claims 8 and 16.
Dependent claims 8 and 16 recite, inter alia, “selecting a point on one
of the displayed charts displays information relating to a comparison of the
reference line to a value of the selected point,” for which the Examiner cites
the combination of Kahn and Benjamin. Final Act. 10.
Appellant argues: “Benjamin is silent regarding a reference line; so
Benjamin cannot possibly disclose any claim feature reciting a reference
line.”
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck &
Co., 800 F.2d 1091, 1097 (Fed.Cir.1986) (Nonobviousness cannot be
established by attacking the references individually where the rejection is
based upon the teachings of a combination of references.). We are not
persuaded of error.
CLAIM 12: OBVIOUSNESS OVER KAHN,
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MACGREGOR, HARVEY, KOREN, AND PCREVIEW.
Appellant argues, inter alia, this claim is patentable in view of its
dependence from independent Claims 1, 9, and 17. Appeal Br. 30.
As discussed above, we are not persuaded the Examiner errs with
respect to the independent claims.
Dependent claim 12 recites, inter alia, “sorting the displayed charts
and updating the display in response to the sorting.”
Appellant contends the Examiner finds PCreview discloses this
feature, but fails to provide any specific citation, or analysis, therefore.
Appeal Br. 31.
We agree with Appellant. The Examiner finds:
Pcreview discloses sorting the displayed charts and updating
the display in response to the sorting. It would have been
obvious to one of ordinary skill in the art at the time of the
invention because this was a desired use of a spreadsheet as
shown by the question.
Final Act. 11. We find the Examiner fails to provide a specific citation to
support the finding.

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CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 9, 17,
21
103 Kahn, MacGregor,
Harvey
1, 9, 17, 21
2, 3, 6,
10, 11,
14, 18
103 Kahn, MacGregor,
Harvey, Koren
2, 3, 6, 10,
14, 18
11
4, 5, 13,
19
103 Kahn, MacGregor,
Harvey, Koren, Wilson
4, 19 5, 13
7, 8, 15,
16
103 Kahn, MacGregor,
Harvey, Koren,
Benjamin
7, 8, 15, 16
12 103 Kahn, MacGregor,
Harvey, Koren,
PCreview
12
Overall
Outcome
1–4, 6–10,
14–19, 21
5, 11–13

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART