Ex Parte Bates et al

Board of Patent Appeals and Interferences

Jul 25, 2012

10062102 (B.P.A.I. Jul. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARY LEE BATES, GILFORD FRANCIS MARTINO,
JOHN MATTHEW SANTOSUOSSO, and VINCENT T. TIMON III
____________

Appeal 2010-004398
Application 10/062,102
Technology Center 2100
____________

Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE,
and LARRY J. HUME, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1 and 9. Claims 2-8 and 10-26 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2010-004398
Application 10/062,102

2
STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to a method and system for selecting
multiple sets of data in an application (see Spec. 3:8-20). Claim 1, which is
illustrative of the invention, reads as follows:
1. A method for selecting multiple sets of data in an
application, comprising the steps of:
selecting a first set of data within the application; and
selecting a second set of data within the application,
wherein the first set of data remains selected during the
selection of the second set of data,
wherein the method is adapted to allow selecting of the
second set of data anywhere within the application irrespective
of a location of the first set of data,
wherein the method is adapted to allow selection of the
second set of data that overlaps the first set of data.
Rejection
Claims 1 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fleming (US 5,664,210) and Hussam (WO 01/29709
A1).1

1 The Final Rejection indicated that claims 1 and 9 were rejected as
anticipate by Fleming. However, an amendment filed February 26, 2009,
added the limitations of claims 6 and 13 to claims 1 and 9, respectively, and
canceled the remaining claims. While the Examiner did not modify the
rejection to apply Hussam to the amended claims 1 and 9, we review the
appealed claims as rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Fleming and Hussam, as acknowledged by
Appellants (Br. 4).
Appeal 2010-004398
Application 10/062,102

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Appellants’ Contentions
With respect to the rejection of claims 1 and 9, Appellants do not
dispute the teachings of Fleming and Hussam and merely contend that the
data sets of Hussam “are not overlapping, i.e., they do not each have
portions that are outside of the other” (Br. 5). Appellants assert that Hussam
discloses a data set that is entirely within the other set (id.).
Issue on Appeal
Did the Examiner err in rejecting the claims as being obvious over
Fleming and Hussam because the references do not teach or suggest
“selection of the second set of data that overlaps the first set of data,” as
recited in claims 1 and 9?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
conclusions.
As stated by the Examiner (Ans. 7), Hussam’s second set of selected
data that exists entirely within a first set of selected data, indicates the
second set to be overlapped by the first set of data. In other words, while
one set completely overlaps the other set, the second set is still considered to
overlap the first set because complete overlap is not precluded by the claims.
This characterization is consistent with Appellants’ Specification which
describes examples of two overlapping sets wherein one set completely
overlaps a second set (see Spec. 11:9 – 12:6). Therefore, we agree with the
Examiner’s finding that “one set of data that is entirely within another set of
selected data” disclosed by Hussam, meets the claimed “selection of a
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Application 10/062,102

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second set of data that overlaps a first selected set of data” (see Ans. 7).
Furthermore, nothing in the record suggests that the Examiner’s
interpretation of “overlapping sets of data” is unreasonable, overly broad, or
inconsistent with Appellants’ Specification.

CONCLUSION
On the record before us, we conclude that, because the references
teach or suggest all the claim limitations, the Examiner did not err in
rejecting claims 1 and 9 for obviousness under 35 U.S.C. § 103(a) over
Fleming and Hussam.

DECISION
The Examiner’s decision rejecting claims 1 and 9 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

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