Ex Parte 5946647 et al

Patent Trial and Appeal Board

Jun 20, 2013

90011287 (P.T.A.B. Jun. 20, 2013)

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.
90/011,287 10/15/2010 5946647 031486.647 9354
77970 7590 06/20/2013
Apple Inc.
c/o Novak Druce Connolly Bove + Quigg LLP
1000 Louisiana Street
Fifty-Third Floor
Houston, TX 77002
EXAMINER
STEELMAN, MARY J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/20/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte APPLE, INC.,
Appellant and Patent Owner
____________

Appeal 2013-001460
Reexamination Control 90/011,287
Patent 5,946,647
Technology Center 3900
____________

Before MAHSHID D. SAADAT, KEVIN F. TURNER, and STEPHEN C.
SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
Patent owner appeals under 35 U.S.C. §§ 134(b) and 306 from a final
rejection of claims 13 and 15-31. We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.

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STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on October 15, 2010 of United States Patent 5,946,647 (the ’647 Patent)
issued to James R. Miller, Thomas Bonura, Bonnie Nardi, and David Wright
on August 31, 1999. Presently, claims 13 and 15-31 stand rejected.
Patentee’s invention relates to performing actions on structures in
computer data (col. 1, ll. 10-11). Claim 13 reads as follows:
13. A program storage medium storing a computer
program for causing a computer to perform the steps of:
receiving computer data;
detecting a structure in the data;
linking at least one action to the detected structure;
enabling selection of the structure and a linked action;
and
executing the selected action linked to the selected
structure.

(App. Br. 23, Claims Appendix).

The Examiner cites the following references:

Nokia Mobile Phones Ltd.
(“Nokia”) EP0458563 A2 Nov. 27, 1991

Pensoft Corporation, “Perspective Handbook,” November 1992,
(“Pensoft”).

Appellant appeals the following rejections:
Claims 13, 15, 16, 20-22, and 24-31 stand rejected under 35 U.S.C.
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§ 102(b) as anticipated by Pensoft (App. Br. 6).
Claims 13, 15, 17-23, and 25-31 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Nokia (App. Br. 10).

ISSUE
Did the Examiner err in rejecting claims 13 and 15-31?

PRINCIPLE OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).

ANALYSIS
Pensoft – Claims 13, 15, 16, 20-22, and 24-31
Appellant argues that “Pensoft does not disclose ‘linking at least one
action to the detected structure’ as recited in claim 15” because, according to
Appellant, “opening of a profile is not an action” and “there is no action
being performed on the detected structure” (App. Br. 6 and 9).
The Examiner states that Pensoft discloses an “action” (i.e., opening a
profile – Pensoft, pp. 9-12 and 43) that is “linked” to an item in a document
(or a “structure” – see Pensoft, pp. 9-10) (Ans. 8-11). Appellant states that
an “action” as recited in claim 15 is “a computer subroutine that causes the
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CPU to perform a sequence of operations on the particular structure to which
it is linked” (App. Br. 6, citing Specification, col. 2, ll. 32-34) and that
Pensoft fails to disclose such an “action.”
Even assuming Appellant’s contention to be correct that an “action”
must be a subroutine that causes the CPU to perform operations on a
structure to which it is linked, Appellant has not persuasively demonstrated
that the action of Pensoft (i.e., opening a profile) is not a subroutine that
causes the CPU to perform operations. In fact, Pensoft discloses that upon
selection of an item in a document, the computer (or CPU) opens a
corresponding profile (see e.g., Pensoft, pp. 9-12 and 43). In order for the
computer to perform such an operation, the computer would have executed a
program (or subroutine) to do so. Otherwise, the “action” of opening a
profile would not be performed.
While Appellant argues that the profile of Pensoft “is not an action
and does not contain an action” (App. Br. 7), Appellant does not indicate
how opening the profile of Pensoft differs from an “action” (or an operation
performed by a subroutine). One of ordinary skill in the art would have
understood that “opening” a profile would have entailed an action at least
because some activity would be performed to execute the operation.
Appellant also argues that “Pensoft does not disclose ‘linking at least
one action to the detected structure’” (App. Br. 9). As described above, in
Pensoft, an item in a document is selected and a profile that corresponds to
the selected item is launched. Appellant does not indicate a specialized
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definition of the term “link” in the Specification. In the absence of such a
definition, we construe the term broadly but reasonably and in light of the
Specification to include “associated or connected with.”
In Pensoft, the profile is “linked” to the selected item because the
specific profile that corresponds to the selected item (and not an unrelated
profile) is launched upon selection of the item. Hence, the opening of the
specific profile is “linked to” (or associated with) the corresponding selected
item.
While Appellant argues that “Pensoft uses ‘link’ to refer to the
relationship between two pieces of information” (App. Br. 10), Appellant
does not indicate how opening a profile in Pensoft is not “linked to” (or
associated with) the specifically selected item that corresponds to the profile
that is opened.
Appellant does not provide additional arguments in support of claims
13, 16, 20-22, and 24-31.
Affirmance of the rejection for claims 13, 15, 16, 20-22, and 24-31
based on Pensoft renders it unnecessary to reach the propriety of the
Examiner’s decision to reject those claims on a different basis. Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach
the propriety of the rejection of those claims over Nokia.

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Nokia- Claims 17-19 and 23
Appellant argues that Nokia fails to disclose linking (App. Br. 11-14).
Claim 15 (from which claims 17-19 and 23 depend), for example, recites
detecting a structure in computer data and linking an action to the detected
structure. We disagree with Appellant for at least the reasons set forth by
the Examiner (see e.g., Ans. 17-21).
Appellant appears to argue that the Specification discloses that to
“link” actions with structures means “to associate actions with . . .
structures” (App. Br. 11, citing ’647 patent, col. 3, ll. 38-44). Even
assuming Appellant’s contention to be true that “linking” as recited in claim
15 includes “associating,” we agree with the Examiner that Nokia discloses
this feature.
For example, Nokia discloses that an apparatus (i.e., “RPK”) “makes a
call to [a telephone] number” (col. 5, l. 37) after the apparatus “searches out”
the telephone number in a message and “the user accepts the number” (col.
5, ll. 34-36). Nokia further discloses that after the user “accepts the number
(col. 7, l. 15), the “RPK makes a call to the number” (col. 8, l. 1) “only when
the number to be used is . . . in the display as a consequence of [the user
accepting the number]” (col. 8, ll. 3-5). The number is associated with (or
“linked”) to the action of the user accepting the number because the
apparatus makes a call to the number only “as a consequence of” the user
performing the action (i.e., accepting the number).
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Appellant also argues that Nokia fails to disclose enabling selection of
the structure and a linked action, as recited in claim 15 (from which claims
17-19 and 23 depend) (App. Br. 15). We disagree with Appellant for at least
the reasons set forth by the Examiner (see e.g., Ans. 17-21).
As indicated by the Examiner and described above, Nokia discloses a
user who “accepts the [telephone] number” after the apparatus “searches
out” the telephone number in a message (col. 5, ll. 34-35) and the apparatus
calling the telephone number “as a consequence” (col. 8, ll. 4-5) of the user
accepting the telephone number. Appellant has not sufficiently
demonstrated that the user in Nokia would have been able to accept a
telephone number if the apparatus does not enable the user to select the
telephone number (or “structure”). One of ordinary skill in the art would
have understood that in order for a user to be able to “accept” a telephone
number on an apparatus (and subsequent calling of the telephone number “as
a consequence” of the user accepting the telephone number), the apparatus
would enable the user to do so. Otherwise, the user would be unable to
accept the telephone number on the apparatus, which would be contrary to
the disclosure in Nokia.
Appellant also argues that Nokia fails to disclose executing the
selected action linked to the selected structure, as recited in claim 15 (App.
Br. 16). We disagree with Appellant for at least the reasons set forth by the
Examiner (see e.g., Ans. 23).
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As indicated by the Examiner and as described above, Nokia discloses
a user accepting a telephone number on an apparatus and the apparatus
calling the telephone number “as a consequence” of the user accepting the
telephone number. Appellant does not indicate a difference between a user
accepting a telephone number for subsequent calling of the selected
telephone number and “executing” a selected action. In both cases, an
action is selected and the action is performed or “executed.”
Regarding claim 18, Appellant argues that Nokia fails to disclose
“that ‘the grammar is associated with a particular action, and wherein the
step of linking at least one action to the detected structure includes the step
of linking the particular action to the detected structure’” (App. Br. 17). We
disagree with Appellant for at least the reasons set forth by the Examiner
(see e.g., Ans. 25-28).
Appellant argues that claim 18 “requires a grammar associated with a
particular action” (App. Br. 17), thus implying that Nokia fails to disclose a
grammar associated with an action. However, as described above and as
indicated by the Examiner, Nokia discloses a telephone number (or a
“grammar”) that is “associated with” an action (e.g., selecting the telephone
number and calling the telephone number as a consequence of the selecting
of the telephone number). Appellant does not demonstrate a difference
between the telephone number (or structure of the telephone number) and
the “grammar” as recited in claim 18.
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Regarding claim 19, Appellant argues that Nokia fails to disclose
“that ‘the memory contains strings, and wherein the step of detecting a
structure further comprises the steps of retrieving a string from the memory
and scanning the data to identify the string’” (App. Br. 18). We disagree
with Appellant for at least the reasons set forth by the Examiner (see e.g.,
Ans. 30).
Appellant argues that “Nokia looks for . . . four sequential number” in
a text message but fails to disclose “use of a string to identify that exact
string” (App. Br. 18). However, as the Examiner indicates and as described
above, Nokia discloses searching a message for a telephone number.
Appellant has not sufficiently pointed out any differences between searching
a message for a telephone number and scanning data (or a message) to
identify a string (or telephone number).
Appellant also argues that “Nokia fails to disclose a memory
containing strings” (App. Br. 18). However, as the Examiner indicates and
as described above, Nokia discloses that the apparatus “stores the number
under a name in the directory” (col. 8, ll. 47-48). Also, Appellant does not
indicate how the message that is searched in Nokia is not stored in the
apparatus. One of skill in the art would have understood that in order to
display and search the message in Nokia, the message would be “stored” on
the apparatus on which the search is performed. Otherwise, the apparatus
would be unable to search the message (the message not being stored and
therefore not being accessible).
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Appellant does not provide additional arguments in support of claims
17-19 and 23.

CONCLUSION
We conclude that the Examiner did not err in rejecting claims 13 and
15-31.

DECISION
The decision of the Examiner to reject claims 13, 15, 16, 20-22, and
24-31 as anticipated by Pensoft and claims 17-19 and 23 as anticipated by
Nokia is AFFIRMED.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

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