Ex Parte Chen et al

Board of Patent Appeals and Interferences

Jan 15, 2009

10001140 (B.P.A.I. Jan. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MINGTE CHEN, ANIL KUMAR ANNADATA, KUANG-YANG
HUANG, ROHIT BEDI and HENRY DANA JAY
____________

Appeal 2008-1920
Application 10/001,140
Technology Center 2100
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Decided: January 15, 2009
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Before JOSEPH L. DIXON, JEAN R. HOMERE, and STEPHEN C. SIU,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
This is an Order remanding the application to the Examiner. From
our initial review of the application and prosecution history, we note
Appellants contested the eligibility of the Microsoft Word 2000 screen shots.
We note that the figure 1 includes both copyright information and an
indication of what “Service Pack” was present on the computer at the time of
Appeal 2008-1920
Application 10/001,140

the screen shots. While difficult to read it appears that SP-3 (Service Pack
3) was in use at the time of the recordation of the screen shot. From our
brief Internet search, Service Pack 1a (SR1a) was available on or about May
12, 2000, Service Pack 2 (SP-2) was available on or about November 14,
2000, and Service Pack 3 (SP-3) was available on or about October 21,
2002. Therefore, if the functionality was not added by Service Pack 3, then
the date of the reference should make Microsoft Word 2000 prior art, and if
Service Pack 3 added the disputed functionality described/shown, then the
date is after the critical date in the instant application and is not prior art.
The Examiner should find some corroborating evidence that the
add/remove functionality was present in either the original Microsoft Word
2000 release or in Service Pack's 1 or 2, or provide evidence of the
availability of Service Pack 3 for Microsoft Word 2000 prior to the filing
date.
We cannot evaluate the merits of the Examiner's rejection unless it
can be determined what the relevant date to be accorded to the functionality
used in the Examiner's rejection with respect to the Microsoft Word 2000
(SP-3) used as evidence of the existence of this functionality. Here, the
Examiner is relying upon Microsoft Word 2000 (SP-3) as evidence of the
existence of the add/remove buttons. We do note some of the discussions on
the Internet to discuss "chevrons" with regard to these features.

Accordingly, it is
ORDERED that the application is returned to the Examiner to:
(1) determine whether Microsoft Word 2000 (SP-3) is prior art before
Appellants' filing date in November 15, 2001, and
2
Appeal 2008-1920
Application 10/001,140

(2) other actions, as deemed appropriate.

REMANDED

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