Ex Parte Chen et al

Patent Trial and Appeal Board

May 13, 2013

11379604 (P.T.A.B. May. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YEN-FU CHEN, JOHN HANS HANDY-BOSMA,
SUSAN ELISE LEE, and KEITH RAYMOND WALKER
____________________

Appeal 2010-012562
Application 11/379,604
Technology Center 2100
____________________

Before ROBERT E. NAPPI, IRVIN E. BRANCH, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
38–62. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter new grounds of rejection of claims 48–57.

Illustrative Claim
The disclosure relates to data processing systems that implement
methods of content prediction based on regular expression pattern analysis
(Spec. ¶1).
Claim 38 is illustrative and is reproduced below with the disputed
limitation emphasized:
38. A computer-implemented method for content prediction,
the computer implemented method comprising:
analyzing a sample set of cells and a target set of cells in
a document to identify differences between an original format
of data in the sample set of cells and a desired format of data in
the target set of cells;
generating a regular expression based on regular
expression analysis that expresses the differences for the
content prediction of data in an additional set of cells using
individualized content prediction logic, wherein a document
editor includes the individualized content prediction logic that
is individualized for a particular user;
creating a content prediction instruction by the
individualized content prediction logic for the regular
expression pattern based on the regular expression analysis,
wherein the regular expression pattern is used to generate
content prediction changes for modifying the data in the
additional set of cells into the desired format based on the
regular expression analysis;
presenting a preview of the content prediction changes
for the additional set of cells to the particular user;
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receiving a user input from the particular user indicating
a preview acceptance or a preview rejection for the preview of
the content prediction changes for the additional set of cells;
and
responsive to receiving the user input indicating the
preview acceptance, storing the content prediction instruction in
the document and applying the content prediction changes to
the additional set of cells to modify the data in the additional set
of cells to the desired format.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Poibeau US 2004/0073874 A1 Apr. 15, 2004

Smith, Jan, “Excel Basics: Autofill Data” and “Excel Basics: autofill”
(2002), http://web.archive.org/web/20021002062116/http://www.jegsworks.
com/Lessons/numbers/basics/step-autofilldata.htm (last visited Jun. 9,
2009).1

Mehta, Tushar, “Real-life examples of where regular expression
played an important role in an excel Worksheet” (2004),
http://web.archive.org/web/20041023203422/http://www.tmehta.com/regexp
/examples.htm (last visited Jun. 9, 2009).

Adelberg, Brad, “NoDoSE – A Tool for Semi-Automatically
Extracting Structured and Semi Structured Data from Text Documents,”
Record Volume 27, Issue 2, June 1998, pp. 283–294.

1 Both the Examiner and Appellants sometimes refer to this reference by the
author’s first name, “Jan.” Herein, we consistently refer to the reference by
the author’s surname, “Smith.”
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Rejections
The Examiner made the following rejections:
Claims 38–41, 43, 44, 46–51, 53, 54, 56–60, and 62 stand rejected
under 35 U.S.C §103(a) as unpatentable over Smith in view of Mehta (Ans.
5).
Claims 42 and 52 stand rejected under 35 U.S.C §103(a) as
unpatentable over Smith in view of Mehta, and further in view of Poibeau
(Ans. 13).
Claims 45, 55, and 61 stand rejected under 35 U.S.C §103(a) as
unpatentable over Smith in view of Mehta, and further in view of Adelberg
(Ans. 15).

ANALYSIS
We have reviewed Appellants’ arguments in the Appeal Brief, and
have reviewed the Examiner’s response to Appellants’ arguments.2 Rather

2 Separate patentability is not argued for dependent claims 39–47, 49–57,
and 59–62. Appellants present dependent claims 39–41, 43, 44, 46, 47, 49–
51, 53, 54, 56, 57, 59, and 60 under a separate heading, asserting that they
are patentable “at least by virtue of their dependence on their respective
independent claims” (Br. 16), without providing any additional arguments to
establish separate patentability. Dependent claims 45, 55, and 61 are also
presented under a separate heading, but the arguments are directed only to
whether Adelberg discloses a limitation in the underlying independent
claims for which the Examiner relies on the combination of Smith and
Mehta, without addressing the specific limitations of those dependent claims
themselves (Br. 16–18). Claims 39–47 accordingly stand or fall with claim
38; claims 49–57 stand or fall with claim 48; and claims 59–62 stand or fall
with claim 58. Except for our ultimate decision, the dependent claims are
not discussed further herein.
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than repeat the arguments here, we refer to the Appeal Brief and the Answer
for the respective positions of Appellants and the Examiner.

Claim 38
Appellants contend that the Examiner erred in rejecting claim 38
because the combination of references fails to disclose “generating a regular
expression pattern based on regular expression analysis that expresses the
differences for the content prediction of data in an additional set of cells
using individualized content prediction logic, wherein a document editor
includes the individualized content prediction logic that is individualized for
a particular user” (Br. 12). We disagree that the Examiner has erred.
Appellants rely on the preamble’s recitation of a “computer-
implemented method” in arguing the claim requires that the regular
expression pattern be generated “automatically” by the data processing
system (Br. 13). This constrains construction of the claim beyond what it
recites. While the preamble’s recitation of a computer-implemented method
requires that the steps be performed in a computing environment, the claim
contains no language foreclosing the involvement of noncomputational
mechanisms in fully performing the recited steps. Indeed, the Specification
includes examples that describe user interactions in fully effecting execution
of the computer-implemented method (see, e.g., Spec. ¶¶ 67, 70, 88).
Mehta describes the use of regular expression patterns with the Excel
spreadsheet, with the Examiner combining such disclosure with Smith’s
description of the Excel spreadsheet’s AutoFill functionality. Contrary to
Appellants’ assertion, the Examiner correctly observes that Mehta discloses
individualized content prediction logic that is used to express differences for
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content prediction of data in an additional set of cells (Ans. 18–19). Since
Mehta’s regular expression patterns are generated in a computing
environment, we conclude that the Examiner did not err in finding that
Mehta discloses computer-implemented “generat[ion of] a regular
expression pattern based on regular expression analysis that expresses the
differences for the content prediction of data in an additional set of cells
using individualized content prediction logic, wherein a document editor
includes the individualized content prediction logic that is individualized for
a particular user.”
We accordingly sustain the Examiner’s rejection of claim 38.

Claim 48
Appellants contend that the Examiner erred in rejecting claim 48
because the combination of references fails to disclose “computer usable
program code for generating a regular expression pattern based on regular
expression analysis that expresses the differences for the content prediction
of data in an additional set of cells using individualized content prediction
logic, wherein a document editor includes the individualized content
prediction logic that is individualized for a particular user” (Br. 14–15). We
agree that the Examiner has erred.
Unlike claim 38, the limitation identified by Appellants in claim 48
includes language that constrains the claim to require that generation of the
regular expression pattern be performed by computer usable program code.
Since Mehta relies on a user to input the regular expression pattern and does
not disclose such program code, we agree that the Examiner has erred.
We accordingly do not sustain the Examiner’s rejection of claim 48.
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Claim 58
Appellants contend that the Examiner erred in rejecting claim 58
because the combination of references fails to disclose “a processing unit
coupled to the bus system, wherein the processing unit executes the
computer useable program code … to generate a regular expression pattern
based on regular expression analysis that expresses the differences for the
content prediction of data in an additional set of cells using individualized
content prediction logic, wherein a document editor includes the
individualized content prediction logic that is individualized for a particular
user” (Br. 15). We agree that the Examiner has erred.
Similar to our analysis of claim 48, we conclude that claim 58
includes language constraining the claim to require that generation of the
regular expression pattern be performed by computer usable program code,
which is not disclosed by Mehta. We therefore agree that the Examiner has
erred.
We accordingly do not sustain the Examiner’s rejection of claim 58.

NEW GROUNDS OF REJECTION UNDER 37 C.F.R. §41.50(b)
Under 37 C.F.R §41.50(b), we enter a new ground of rejection against
claim 48 under 35 U.S.C. §101. Claim 48 recites “[a] computer program
product … comprising … a computer readable storage medium [and]
computer usable program code stored in the computer readable storage
medium … adapted to cause a processor of a computer to execute the
computer usable program code.” Appellants’ Specification identifies “a
computer readable medium” as “an electronic, magnetic, optical,
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electromagnetic, infrared, or semiconductor system (or apparatus or device)
or a propagation medium” (Spec. ¶91, emphasis added). Claim 48 therefore
covers forms of nontransitory tangible media as well as transitory
propagating signals, the latter of which are not within one of the four
categories of patentable subject matter defined under 35 U.S.C. §101. In re
Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Accordingly, we now reject
independent claim 48 and dependent claims 49–57 as being drawn to subject
matter not eligible for patent protection under 35 U.S.C. §101.

CONCLUSION
On the record before us, we conclude the following:
(1) The Examiner has not erred in rejecting claims 38–41, 43, 44, 46,
and 47 under 35 U.S.C. §103(a) as unpatentable over Smith in view of
Mehta.
(2) The Examiner has not erred in rejecting claim 42 under 35 U.S.C.
§103(a) as unpatentable over Smith in view of Mehta, and further in view of
Poibeau.
(3) The Examiner has not erred in rejecting claim 45 under 35 U.S.C.
§103(a) as unpatentable over Smith in view of Mehta, and further in view of
Adelberg.
(4) The Examiner has erred in rejecting claims 48–51, 53, 54, 56–60,
and 62 under 35 U.S.C. §103(a) as unpatentable over Smith in view of
Mehta.
(5) The Examiner has erred in rejecting claim 52 under 35 U.S.C.
§103(a) as unpatentable over Smith in view of Mehta, and further in view of
Poibeau.
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(6) The Examiner has erred in rejecting claims 55 and 61 under 35
U.S.C. §103(a) as unpatentable over Smith in view of Mehta, and further in
view of Adelberg.

DECISION
The Examiner’s decision rejecting claims 38–47 is affirmed.
The Examiner’s decision rejecting claims 48–62 is reversed.
A new ground of rejection is entered pursuant to 37 C.F.R. §41.50(b)
rejecting claims 48–57 under 35 U.S.C. §101 as drawn to nonpatentable
subject matter.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection …
shall not be considered final for judicial review.” This section 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 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. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

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AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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