Ex Parte Berger et al

Patent Trial and Appeal Board

Aug 26, 2016

13093778 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/093,778 04/25/2011
73576 7590
APPLE INC - Fletcher
c/o Fletcher Yoder, PC
P.O. Box 692289
Houston, TX 77269-2289
08/30/2016
FIRST NAMED INVENTOR
Peter Glen Berger
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P5561USC1 I APPL:0418-l 9350
EXAMINER
HILLERY, NATHAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/30/2016 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):
docket@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER GLEN BERGER, JAY CHRISTOPHER CAPELA,
Y ANIV GUR, ROGER ROCK ROSNER, PETER SU, and
CHRISTOPHER DOUGLAS WEELDREYER
Appeal2014-005960
Application 13/093,778
Technology Center 3700
Before EDWARD A. BROWN, AMANDA F. WIEKER, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter Glen Berger et al. (Appellants)1 appeal under 35 U.S.C. § 134(a)
from the Examiner's decision to finally reject claims 1-9, 11-15, and 17-20,
which are all of the pending claims. Appeal Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION.
1 The Appeal Brief identifies Apple, Inc. as the real party in interest. Appeal
Br. 1.
Appeal2014-005960
Application 13/093,778
CLAIMED SUBJECT MATTER
Claims 1, 13, and 17 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. A method for pasting, comprising:
receiving, on an electronic device, a selection of an option
to paste a set of cells in a paste destination;
determining, on the electronic device, that the paste
destination does not contain enough cells to accommodate a
paste operation associated with the selected option; and
automatically adding one or more rows of cells, columns
of cells, or both to the paste destination using a processor so that
the paste destination contains sufficient cells to accommodate the
paste operation.
Appeal Br. 13 (Claims App.).
REJECTIONS
I. Claims 9 and 20 are rejected under 35 U.S.C. § 112, second
paragraph.
II. Claims 1-9, 11-15, and 17-20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Quattro Pro 9 (1999) (herein "Quattro") and
Matthew MacDonald, Excel 2003 for Starters: The Missing Manual (herein,
"MacDonald").
ANALYSIS
Rejection I
New Ground of Rejection Under 35 U.S.C. § 112, Second Paragraph
Claim 1 recites, inter alia, the step of "automatically adding one or
more rows of cells, columns of cells, or both to the paste destination using a
processor so that the paste destination contains sufficient cells to
accommodate the paste operation." Appeal Br. 13 (Claims App.) (emphasis
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Application 13/093,778
added). Dependent claim 9 recites "wherein automatically expanding the
paste destination comprises automatically addingjust enough rows of cells
or columns of cells to accommodate the paste operation." Id. at 14
(emphasis added). Claim 17 and dependent claim 20 recite limitations
similar to claims 1 and 9, respectively. Id. at 15.
The Examiner finds there is insufficient antecedent basis for the
limitation of "automatically expanding the paste destination" in claims 9 and
20. Final Act. 2. The Examiner also finds it is unclear how claim 9 further
limits the last step of claim 1 and how claim 20 further limits the
"automatically add" limitation of claim 13. Ans. 2-3.
A failure to provide explicit antecedent basis for a term in a claim
does not per se render the claim indefinite, there being a "well-settled rule
that claims are not necessarily invalid for a lack of antecedent basis."
Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F .3d
1367, 1376 (Fed. Cir. 2008). "[D]espite the absence of explicit antecedent
basis, if the scope of a claim would be reasonably ascertainable by those
skilled in the art, then the claim is not indefinite." Energizer Holdings, Inc.
v. Int 'l Trade Comm 'n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006) (citation
omitted); see also Manual of Patent Examining Procedure (MPEP)
§ 2173.05( e) ("[T]he failure to provide explicit antecedent basis for terms
does not always render a claim indefinite."). Thus, whether a claim, despite
lacking explicit antecedent basis for a term, nonetheless has a reasonably
certain meaning, must be determined in context. Energizer Holdings, 435
F.3d at 1370. Also, "[i]nherent components of elements recited have
antecedent basis in the recitation of the components themselves." MPEP
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Application 13/093,778
§ 2173.05(e) (citing Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir
2001)).
Appellants contend the meaning of "automatically expanding the
paste destination" in dependent claims 9 and 20 is sufficiently clear when
this limi ta ti on is read in view of independent claims 1 and 1 7, respectively.
Appeal Br. 7. Appellants also contend that the limitation "automatically
adding one or more rows of cells ... to the paste destination" in claim 1, and
the similar limitation in claim 13, would include inherently "expanding the
paste destination," as recited in claims 9 and 20. Id.
These contentions are persuasive. The Examiner does not find that
the meaning of "automatically expanding the paste destination" is either
unclear, or not an inherent result of "automatically adding one or more rows
of cells, columns of cells, or both to the paste destination." Appellants'
Specification describes an embodiment where the existing destination table
404 shown in Figure 4 F is too small to accommodate grid 406 shown in
Figure 4C during a paste operation. Spec. iJ 30. Grid 406 includes a
selected set of cells of table 402 shown in Figure 4B. Id. Table 404 ("the
paste destination") is automatically expanded as depicted in Figure 4G to
accommodate the added cells. Id. This disclosure supports Appellants'
position that the meaning of "automatically expanding the paste destination"
in claims 9 and 20 is sufficiently clear. It also supports Appellants' position
that this limitation is an inherent result of "automatically adding one or more
rows of cells ... to the paste destination," as recited in claim 1, and as
similarly recited in claim 13. Accordingly, we do not sustain the rejection of
claims 9 and 20 under 35 U.S.C. § 112, second paragraph, for the reasons
stated by the Examiner.
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Application 13/093,778
Although we do not sustain the Examiner's rejection of claims 9 and
20, we determine that independent claims 1, 13, and 17, and all claims
depending therefrom, are unclear for different reasons. Particularly, each of
claims 1, 13, and 17 recites that "the paste destination contains sufficient
cells to accommodate the paste operation." Appeal Br. 13-15 (emphasis
added). The term "sufficient" is not found in the original disclosure.
We note a definition of "sufficient" is "1 a: enough to meet the needs
of a situation or a proposed end <~ sufficient provisions for a month>."
Merriam-Webster's Collegiate® Dictionary 1248 (11th ed. 2003). In claims
1, 13, and 17, it is unclear whether "sufficient" means "just enough," or may
instead mean a range of from "just enough" to a certain upper number of
cells. Claim 9, for example, recites ''just enough rows or columns of cells to
accommodate the paste operation." Id. at 14 (emphasis added). If
"sufficient" means "just enough," then it is not apparent how claim 9 further
limits claim 1. But if "sufficient" means a range of from "just enough" to a
certain upper number of cells, the upper number of cells is not specified.
Consequently, the metes and bounds of "sufficient" in claims 1, 13, and 17
are unclear from Appellants' disclosure.
Consequently, we enter a new ground of rejection of claims 1, 13, and
17, and dependent claims 2-9, 11, 12, 14, 15, and 18-20, under 35 U.S.C.
§ 112, second paragraph, pursuant to our authority under 37 C.F.R.
§ 41.50(b).
Rejection II
Claim 1 recites, inter alia, the step of "determining, on the electronic
device, that the paste destination does not contain enough cells to
accommodate a paste operation associated with the selected option." Appeal
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Application 13/093,778
Br. 13 (Claims App.) (emphasis added). Claims 13 and 17 recite similar
language. Id. at 14-15.
MacDonald discloses a method for a user "to insert cells into an
existing row or column." MacDonald§ 3.3.3. The method involves
copying or cutting a cell or group of cells, selecting the spot to paste the cell
or cells, and inserting the cell or cells at the selected spot. Id. MacDonald
teaches that, in this method, "when you insert cells, you won't overwrite the
existing data. Instead, Excel asks you whether the existing cells should be
shifted down or to the right to make way for the new cells." Id.
The Examiner finds MacDonald's teaching of inserting the new cells
and shifting the existing cells to make way for them meets the "determining"
step in claim 1. Final Act. 4. The Examiner also finds pasting the two new
rows and Excel moving the original set of items meets the "automatically
adding" step in claim 1. Id. According to the Examiner,
Excel as described by MacDonald clearly makes a determination
as to whether the paste destination contains enough cells to
accommodate the paste operation, since Excel does not want to
overwrite the existing data (p, 3 lines 8 and 9), Excel needs to
determine how many new rows and/or columns to paste to fulfill
the operation (p 3, last two sentences), and Excel needs enough
room to move the original cells out of the way (p 3, last two
sentences).
Ans. 4.
Appellants contend that MacDonald fails to disclose the
"determining" step. Appeal Br. 10. According to Appellants,
MacDonald discloses "an 'Insert Paste' operation that responds to an
indication to paste cells by automatically adding rows or columns in
accordance with the size of the proposed paste destination, without any
determination being disclosed as to whether such addition of rows or
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Application 13/093,778
columns is needed to accommodate the paste operation." Id. Appellants add
that MacDonald "appears to always add cells to the paste destination and,
thus ... does not disclose any determination of whether the added cells
would otherwise be accommodated at the selected paste destination." Id. at
11 (citing MacDonald 3) (italics added).
Appellants also contest the Examiner's "overly broad construction" of
the claims in the Advisory Action dated July 22, 2013. Appeal Br. 11. In
the Advisory Action, the Examiner states that the claims are "open ended
enough" to encompass "the user making the determination as opposed to a
computer 'automatically' making a determination." Advisory Act. 2.
Appellants contend claim 1 "states that the addition of rows or columns to
the paste destination occurs 'automatically' and 'using a processor,"' and
that claim 13 directed to a system and claim 1 7 directed to a computer
program product also recite similar limitations that do not support the
Examiner's construction. Appeal Br. 11.
Appellants contend that, even if the Examiner's construction were
correct, MacDonald still does not disclose
a user, system, or program, making any determination as to
whether a selected paste destination contains enough cells to
accommodate a paste operation before adding rows or columns
of cells. Instead, as noted above, for any paste operation, the
MacDonald reference, as a matter of operation, appears to merely
add rows and columns corresponding to the size of the paste
selection.
Appeal Br. 11.
Appellants' contentions are persuasive. The Examiner has not
established by a preponderance of the evidence that MacDonald determines
a paste destination does not contain enough cells to accommodate a paste
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Application 13/093,778
operation associated with a selected option to paste a set of cells in the paste
destination, as required by claims 1, 13, and 17. McDonald discloses that
once a user selects where the cell or group of cells are to be pasted, the user
is then given a choice as to where the existing cells should be moved ("shift
cells down" or "shift cells right"). See MacDonald Fig. 3-9 (top).
Figure 3-9 (bottom) of MacDonald shows an Excel spreadsheet after
two rows have been pasted, and the original set of items moved down
"politely out of the way." MacDonald§ 3.3.3. The two pasted rows appear
to contain the same information as that shown in rows 4 and 5. Id., Fig. 3-9.
However, this movement of existing cells does not establish that a
determination was made that the paste destination did not contain enough
cells to accommodate the paste operation after the user choose either "Insert
~Copied Cells" or "Insert~ Cut Cells." In fact, this disclosure in
MacDonald does not establish that the number of existing cells at the
selected paste location is even determined. That is, MacDonald may always
automatically move the existing cells at the selected paste location
regardless of whether the existing cells may or may not be able to
accommodate the paste operation. And by always automatically moving the
existing cells at the paste location, "overwriting" existing data would always
be avoided. Accordingly, the Examiner's finding that "it is obvious that a
determination or check is made by the Excel described by MacDonald as to
whether the paste destination does contain enough cells to accommodate the
paste operation" is not supported by MacDonald.
We also agree with Appellants that the Examiner's construction of the
claims as encompassing "the user making the determination" "that the paste
destination does not contain enough cells to accommodate a paste operation
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Application 13/093,778
associated with the selected option" (Advisory Act. 2) is overly broad.
Appeal Br. 11. Claim 1, for example, recites "receiving, on an electronic
device," "determining, on the electronic device," and "automatically adding
... using a processor." Claim 13 recites "a processor configured to"
perform the "determine" and "automatically add" limitations. Claim 17 calls
for a "computer program product" for performing the "determining" and
"automatically adding" limitations. The Examiner's construction is
inconsistent with these limitations in claims 1, 13, and 17, and thus, is
incorrect.
Accordingly, we do not sustain the rejection of claims 1, 13, and 17,
and dependent claims 2-9, 11, 12, 14, 15, and 18-20, as unpatentable over
Quattro and MacDonald.
New Ground of Rejection Under 35 U.S.C. § 101
Claim 17 is directed to "[a] computer program product for pasting, the
computer program product being embodied in a computer readable storage
medium." Appeal Br. 15 (Claims App.) (emphasis added). We note
Appellants' Specification does not describe explicitly that the computer
readable storage medium is limited to a "tangible" medium or to a "non-
transitory" medium. In fact, the only description relating to the term
"computer readable storage medium" in the Specification states that "[t]he
invention can be implemented in numerous ways, including as ... a
computer readable medium such as a computer readable storage medium or
a computer network wherein program instructions are sent over optical or
communication links." Spec. ,-i 20.
Consequently, we construe the claimed computer readable storage
medium as covering a signal. Thus, because claim 17 covers a signal, that
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Application 13/093,778
is, non-statutory subject matter, we determine that the claim does not comply
with the requirements of 35 U.S.C. § 101. See Ex parte Mewherter, 2013
WL 4477509, at *7 (PTAB 2013) (precedential). Dependent claims 18-20
do not contain any further limitations restricting their scope to statutory
subject matter.
Therefore, we enter a new ground of rejection of claims 17-20 under
35 U.S.C. § 101.
DECISION
The rejection of claims 9 and 20 under 35 U.S.C. § 112, second
paragraph, is reversed.
We enter a new ground of rejection of claims 1-9, 11-15, and 17-20
under 35 U.S.C. § 112, second paragraph.
The rejection of claims 1-9, 11-15, and 17-20 under 35 U.S.C.
§ 103(a) as unpatentable over Quattro and MacDonald is reversed.
\Ve enter a new ground of rejection of claims 17-20 under 35 U.S.C.
§ 101.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4 l.50(b ). Section 4 l.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the
appellant[ s ], within two months from the date of the decision,
must exercise one of the following two options with respect to
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Application 13/093,778
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § l.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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