Ex Parte Breuer

Board of Patent Appeals and Interferences

Jan 29, 2009

09921224 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BREUER MATHIAS
____________

Appeal 2008-3259
Application 09/921,224
Technology Center 2100
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Decided: January 29, 2009
____________

Before JOHN C. MARTIN, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-18. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM IN PART. We also enter new grounds of rejection for
claims 11-17 under the provisions of 37 C.F.R. § 41.50 (b).
Appeal 2008-3259
Application 09/921,224

INVENTION
The invention on appeal is directed generally to the input of data into
an electronic document comprising cells. More particularly, Appellant’s
invention is directed to the input of data into spreadsheet documents (Spec.
1).
ILLUSTRATIVE CLAIMS
Claims 1 and 7, which further illustrate the invention, follow:
1. A method in a data processing system for enabling a user
to input data into a document comprising cells arranged in
columns and rows, a first of the cells and a second of the cells
each having an original content, the method comprising the
steps of:

overriding without deleting the original content of the
first cell with a first user inputted value, the first cell keeping
the original content of the first cell in the first cell while the
original content of the first cell is overridden;

recalculating the cells based on the first user inputted
value;

after recalculating the cells based on the first user
imputed value, overriding without deleting the original content
of the second cell with a second user inputted value, the second
cell keeping the original content of the second cell in the second
cell while the original content of the second cell is overridden;

recalculating the cells based on the second user inputted
value; and

automatically restoring the original content of the first
cell based on a user input such that the second user inputted
value is maintained in the second cell.

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7. A method in a data processing system comprising a
document with cells arranged in rows and columns, each cell
comprising a formula and a last result, the method comprising
the steps of:

receiving a plurality of values for a plurality of the cells;
and

storing the values in the last result of the plurality of the
cells such that the values are used during recalculation instead
of the formulas and such that each of the formulas for the
plurality of the cells can be restored independently of other of
the plurality of cells.

Our understanding of this claim is that the recited “recalculation”
refers to recalculation in cells containing formulas that refer to the plurality
of cells whose received values are being used instead of their formulas.
Spec. at 10, ll. 6-9.

PRIOR ART
The Examiner relies upon the following references as evidence in
support of the rejections:
Kanai US 5,339,410 Aug. 16, 1994
Bhansali US 6,006,239 Dec. 21, 1999
Sorge US 6,691,281 B1 Feb. 10, 2004
Zellweger US 6,185,582 B1 Feb. 6, 2001

THE REJECTIONS
Claims 1-6 and 8-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kanai and Bhansali.
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Claims 7, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Sorge, Zellweger, and Bhansali.

GROUPING OF CLAIMS
Appellant argues independent claims 1, 8, and 11 as a group (App. Br.
6-8). For dependent claims 2-6, 9-10, and 12-16, Appellant states that these
claims are allowable for at least the same reason that claims 1, 8, and 11 are
allowable (App. Br. 8). Therefore, we select claim 1 as the representative
claim for this group and we treat claims 2-6 and 8-16 as standing or falling
with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). We consider independent
claims 7, 17, and 18 separately.

APPELLANT’S CONTENTIONS
Regarding the Examiner’s rejection of independent claims 1, 8, and
11, Appellant contends that the combination of Kanai and Bhansali does not
teach or suggest overriding without deleting an original content of a cell and
automatically restoring the original content of the cell after multiple
recalculations (App. Br. 6-8).
Regarding the Examiner’s rejection of independent claims 7 and 17,
Appellant contends that the combination of Sorge, Zellweger, and Bhansali
does not teach a cell comprising a formula and a last result, wherein the
value stored in the last result is used to recalculate that cell instead of the
formula (App. Br. 8-10).

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Regarding the Examiner’s rejection of independent claim 18,
Appellant contends that the combination of Sorge, Zellweger, and Bhansali
does not teach or suggest temporarily overriding the content of a cell and
recalculating the cell using a value instead of the cell’s formula (App. Br.
10).

EXAMINER’S RESPONSE
Regarding Appellant’s arguments directed to independent claims 1, 8,
and 11, the Examiner contends that Appellant’s claims do not require that
cell values remain unmodified upon inputting data into the first cell (Ans. 9).
Regarding the claimed “automatically restoring the original content” (claim
1), the Examiner notes that Bhansali teaches an undo capability that
performs this function (Ans. 10).
Regarding Appellant’s arguments directed to independent claims 7
and 17, the Examiner contends that Sorge teaches a cell comprising a
formula and a last result. The Examiner points to column 4, lines 10-20 and
column 6, lines 5-37 of Sorge as providing this teaching (Ans. 10).
Regarding Appellant’s arguments directed to independent claim 18,
the Examiner contends that Sorge teaches temporarily overriding the
formula so that the numerical value is used instead of the formula, pointing
to column 4, lines 9-37 of Sorge (Ans. 10-11). The Examiner also points to
Bhansali’s undo feature (Ans. 9, ¶ 1).

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ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:
ISSUE 1
Has Appellant shown error in the Examiner's finding that the
combination of Kanai and Bhansali teaches and/or suggests overriding,
without deleting, an original content of a cell and also automatically
restoring the original content of the cell based on a user input, as recited in
claims 1, 8, and 11?
ISSUE 2
Has Appellant shown error in the Examiner's finding that the
combination of Sorge, Zellweger, and Bhansali teaches and/or suggests a
cell comprising a formula and a last result, wherein the value stored in the
last result is used for recalculation instead of the formula, as recited in
claims 7 and 17?
ISSUE 3
Has Appellant shown error in the Examiner's finding that the
combination of Sorge, Zellweger, and Bhansali teaches and/or suggests
storing a numerical value that temporarily overrides a formula in a cell so
that the numerical value is used instead of the cell’s formula during
recalculation, as recited in claim 18?

PRINCIPLES OF LAW
“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
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“more than the predictable use of prior art elements according to their
established functions.” Id. at 1740.
During prosecution, “the PTO gives claims their ‘broadest reasonable
interpretation.’” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting
In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:

THE KANAI REFERENCE
1. Kanai teaches writing a new (changed) value to a cell in a
spreadsheet program and performing a recalculation using a
predetermined function (col. 4, ll. 15-24).
THE BHANSALI REFERENCE
2. Bhansali teaches an undo feature that implements an inverse
action associated with a previous edit (col. 11, ll. 45-67). An
inverse action can include, for example, restoring deleted data
values (col. 12, ll. 4-7).
THE SORGE REFERENCE
3. Sorge teaches an directly publishing a data table or chart from a
spreadsheet program into an HTML document, from which the
published data can be imported back into the parent spreadsheet
program without loss of functionality, where it can be modified
for republication in the HTML document (Abstract; see also
col. 6, ll. 5-21).
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4. Sorge teaches that formulas retain their functionality after
publication from the spreadsheet to the HTML document (col.
4, ll. 11-19).
THE ZELLWEGER REFERENCE
5. Zellweger teaches first and second cells in a spreadsheet
program (col. 5, ll. 21-27).

ANALYSIS
At the outset, we consider Appellant’s arguments only to the extent
that such arguments are directed to the claimed subject matter.

ISSUE 1
We decide the question whether Appellant has shown error in the
Examiner's finding that the combination of Kanai and Bhansali teaches
and/or suggests overriding, without deleting, an original content of a cell and
also automatically restoring the original content of the cell based on a user
input, as recited in claims 1, 8, and 11.
Before addressing the references, it is necessary to discuss the
meaning of the term “original content” in claim 1. We do not agree with
Appellant’s view that this term refers to the value stored in a cell. See Br. 7
(“Nowhere does Kanai suggest that its cell values are overridden without
being deleted.”). Such an interpretation, which appears to be shared by the
Examiner, is at odds with Appellant’s disclosure as filed, which indicates
that an original, calculated cell value is deleted when it is replaced by a
manually input value. The only original information in the cell that is
retained when a user manually replaces an original (i.e., previous) value with
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a new value is the formula; the “final result” in the cell is changed from the
original value to the new value. See Spec. 9:26-33 (“In the example
illustrated in Fig. 5, the computer program receives, from the user, an
inputted value ‘4’, which the computer program 280 directly enters into cell
‘B1’. Entry of the inputted value into cell ‘B1’, however, does not replace
the formula 540 already present in cell ‘B1’ because the computer program
280 stores the inputted value ‘4’ as the last result 542 of cell ‘B1’.”).
Thus, the original value is not stored in the cell or anywhere else.
Instead, it is recalculated in the event the user wants to restore it. See id. at
11:5-8 (“The user can then select an option to restore the original content of
a particular cell (step 750). If the user selects this option, the computer
program 280 automatically restores the original content of the particular cell
by recalculating the last result based on the formula in the cell and storing
that new result in the last result (step 760).”).
Because all of Appellant’s arguments against the rejection of claims 1,
8, and 11 are based on incorrectly construing the term “original content” to
mean the original cell value, we are summarily sustaining the rejection of
those claims and their dependent claims for obviousness over the applied
prior art.
However, in the interest of completeness, we are also addressing the
merits of the rejection assuming, for the sake of argument, that Appellant is
correct to construe the term “original content” to mean the original cell
value.
We begin our analysis of the references by noting that Kanai teaches
writing a new (changed) value to a cell in a spreadsheet program and also
performing a recalculation using a predetermined function (FF 1). Appellant
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contends that Kanai has no mention of keeping a previous value in a cell (as
required to restore the original content of a cell) (App. Br. 7, ¶2, last
sentence). However, we note that the Examiner’s rejection is based on the
combination of Kanai and Bhansali. As acknowledged by Appellant (App.
Br. 8, ¶1), Bhansali teaches an undo feature that implements an inverse
action associated with an edit (App. Br. 8, ¶ 1; see also FF 2).
Nevertheless, Appellant contends that the secondary Bhansali reference
maintains the original content of a cell in a disk undo log, instead of in the
cell itself (App. Br. 8, ¶ 2, emphasis added). Therefore, we continue our
analysis by considering the scope of the claimed “cell.”
As a matter of claim construction, we broadly but reasonably interpret
the recited “cell” as encompassing not only the visible spreadsheet cell
displayed to the user, but also including all storage locations associated with
the visible spreadsheet cell. This construction is fully consistent with
Appellant’s Specification as shown in Figure 4 and as described at page 8,
lines 20-24. Also, lines 7-11 at page 2 of the Specification explain that the
formulas “are shown directly in the cells for the sake of simplicity.” Given
this construction, we conclude that the broad language of representative
claim 1 does not preclude storing information associated with a visible
spreadsheet cell in one or more storage locations that are separate from the
visible spreadsheet cell itself.
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We note that Bhansali teaches one or more storage locations (i.e., a
disk undo log) that are used to effect an undo operation, including restoring
deleted data values (FF 2). Given Bhansali’s teaching of an undo operation,
we find that the combination of Kanai and Bhansali would have suggested
overriding cell content without deleting the cell’s original value. We also
find that Bhansali’s undo operation reasonably teaches and/or suggests
automatically restoring the original value of the displayed cell based on a
user input. Therefore, we find the weight of the evidence before us supports
the Examiner’s legal conclusion of obviousness.
Because Appellant has not shown the Examiner erred, we sustain the
Examiner’s rejection of representative claim 1, and claims 2-6 and 8-16
which fall therewith, as being unpatentable over the combination of Kanai
and Bhansali.
ISSUE 2
We decide the question whether Appellant has shown error in the
Examiner's finding that the combination of Sorge, Zellweger, and Bhansali
teaches and/or suggests a cell comprising a formula and a last result, wherein
the value stored in the last result portion of a cell is used for recalculation
instead of the formula, as recited in claims 7 and 17.
In reviewing the evidence before us, we note that Sorge teaches
directly publishing a data table or chart from a spreadsheet program into an
HTML document where the published data can be imported back into the
parent spreadsheet program (FF 3). The secondary Zellweger reference
teaches first and second cells in a spreadsheet program (FF 5). The tertiary
Bhansali reference teaches an undo feature, as previously discussed (FF 2).
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We have reviewed the Examiner’s response on page 10 of the Answer
regarding the purported teachings of the references. However, the Examiner
has not established that the proffered combination of Sorge, Zellweger, and
Bhansali fairly teaches and/or suggests a cell comprising a formula and a
last result, wherein the value stored in the last result is used for recalculation
instead of the formula, as required by the language of independent claim 7
and the equivalent language of independent claim 17. Accordingly, we
reverse the Examiner’s rejection of claims 7 and 17 as being unpatentable
over the combination of Sorge, Zellweger, and Bhansali.

ISSUE 3
We decide the question whether Appellant has shown error in the
Examiner's finding that the combination of Sorge, Zellweger, and Bhansali
teaches and/or suggests storing a numerical value that temporarily overrides
a formula in a cell so that the numerical value is used instead of the cell’s
formula during recalculation, as recited in claim 18.
Appellant states that Sorge instead “teaches overwriting and deleting a
spreadsheet cell’s contents, including its formula, with a value and a formula
from an HTML document” (App. Br. 10). However, we note that the
tertiary Bhansali reference teaches an undo operation, as previously
discussed (FF 2). Again, we note that the Examiner’s rejection is based on
the combination of the references. Nevertheless, we agree with Appellant
that overwriting and deleting a spreadsheet cell’s contents, including its
formula, with a value and a formula, does not amount to overriding” a
formula with a value, as required by the claim, even if Sorge is combined
with Bhansali “undo” feature to make the changes temporary. The
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Examiner’s characterization of column 4, lines 9-37 of Sorge as “disclosing
temporarily overriding the formula so that the numerical value is used
instead of the formula in calculations” (Answer 11) has not been adequately
explained and is not understood.
Accordingly, we reverse the Examiner’s rejection of claim 18 as being
unpatentable over the combination of Sorge, Zellweger, and Bhansali.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, Appellant has not
established that the Examiner erred in rejecting claims 1-6 and 8-16 under
35 U.S.C. § 103(a) for obviousness.
Based on the findings of facts and analysis above, Appellant has
established that the Examiner erred in rejecting claims 7, 17, and 18 under
35 U.S.C. § 103(a) for obviousness.

NEW GROUND OF REJECTION
We enter the following new grounds of rejection for claims 11-17
under the provisions of 37 C.F.R. § 41.50(b):

35 U.S.C. § 101
Claims 11-17
Independent claim 11 (and associated dependent claims 12-16) and
independent claim 17 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Each of these claims is directed to a computer
readable medium. A computer-readable medium is directed to statutory
subject matter so long as the language of claim does not read on any
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disclosed non-statutory embodiments (i.e., signals, transmission mediums
and the like). See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) (claim
directed to a signal is not statutory under 35 U.S.C. § 101).
Here, Appellant’s Specification discloses that the scope of the claimed
“computer-readable medium” is intended to broadly encompass media that
can take the form of “a carrier wave received from a network such as the
Internet” (Spec. p. 7, l. 34 through p. 8, l. 1). Therefore, we conclude that
claims 11-17 are directed to non-statutory subject matter, i.e., signals per se.

DECISION
We affirm the Examiner’s decision rejecting claims 1-6 and 8-16.
We reverse the Examiner’s decision rejecting claims 7, 17, and 18.
With respect to the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1)
provides that “Appellant may file a single request for rehearing within two
months of the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to 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
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rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should Appellant elects to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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;
37 C.F.R. § 41.50(b)

pgc

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