Ex Parte Chen et al

Patent Trial and Appeal Board

Nov 14, 2018

11379610 (P.T.A.B. Nov. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/379,610 04/21/2006
37945 7590 11/16/2018
DUKEW. YEE
YEE AND AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Yen-Fu Chen
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.
AUS920060221 US 1 1139
EXAMINER
FABER, DAVID
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
11/16/2018 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
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 1
Appeal2017-000704
Application 11/379,610
Technology Center 2100
Before: ROBERT E. NAPPI, IRVINE. BRANCH, and
PA TRICK M. BOUCHER Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's Final rejection of claims 4, 10, 14 through 24, 28 through 30, 33
through 35, and 37 through 40. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. Br. 2.
Appeal2017-000704
Application 11/379,610
INVENTION
Appellants' disclosed invention relates to content sharing based on
regular-expression pattern analysis. Spec. para. 1. Claim 4 is representative
of the invention and reproduced below.
4. A method for embedding content prediction instructions in a
document while the document is being edited by a user, the
method comprising:
customizing a content prediction instruction using
content prediction logic of a document editor program;
determining a regular expression that describes
differences between content for a plurality of cells
associated with the document; and
embedding, by a computer, the content prediction
instruction in the document being edited by the user,
wherein the content prediction instruction is customized
based on the regular expression.
REJECTIONS AT ISSUE2
The Examiner rejected claim 4 under 35 U.S.C. § I03(a) as being
unpatentable over Stinson et al. (Microsoft Office Excel 2003, hereinafter
"Stinson"), Whittle et al. (US 2005/0050547 Al; pub. Mar. 3, 2005,
hereinafter "Whittle"), Kantrowitz et al. (US 6,618,697 B 1; iss. Sept. 9,
2003, hereinafter "Kantrowitz '697"). Answer 2.
The Examiner rejected claims 10 and 21 through 24 under 35 U.S.C.
§ I03(a) as being unpatentable over Whittle and Kantrowitz et al. (US
2 Throughout this Decision, we refer to the Appeal Brief filed March 21,
2016 ("App. Br."); Reply Brief filed October 19, 2018 ("Reply Br."); Final
Office Action mailed December 23, 2015 ("Final Act.); and the Examiner's
Answer mailed August 25, 2016 ("Answer").
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Application 11/379,610
2002/0156816 Al; pub. Oct. 24, 2002, hereinafter "Kantrowitz '816").
Answer 2.
The Examiner rejected claims 14 through 20 and 28 through 30 under
35 U.S.C. § I03(a) as being unpatentable over Whittle, Kantrowitz '816 and
Kantrowitz '697. Answer 2.
The Examiner rejected claims 33 through 35 under 35 U.S.C. § I03(a)
as being unpatentable over Stinson, Whittle, Kantrowitz '816 and
Kantrowitz '697. Answer 2.
The Examiner rejected claims 37 through 39 under 35 U.S.C. § I03(a)
as being unpatentable over Whittle and Kantrowitz '816, and Brummel (US
5,771,241; iss. June 23, 1998). Answer 3.
The Examiner rejected claim 40 under 35 U.S.C. § I03(a) as being
unpatentable over Stinson, Whittle, Kantrowitz '816, Kantrowitz '697 and
Brummel. Answer 3.
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellants'
arguments. Appellants' arguments have persuaded us of error in the
Examiner's obviousness rejection of claims 4, 21 through 24, 28 through 30,
33 through 35, and 37 through 40, but have not persuaded us of error in the
obviousness rejection of claims 10, and 14 through 20.
Claims 4, 33 through 35.
Appellants argue on pages 10 through 12 and pages 7 and 8 of the
Reply Brief, that the Examiner's obviousness rejection of claim 4 is in error.
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Application 11/379,610
Appellants' arguments present us with several issues, the dispositive of
which is did the Examiner err in finding the combination of the references
teaches embedding content prediction instructions while the document is
being edited.
The Examiner provides a detailed response to Appellants' arguments.
We have reviewed the Examiner's response and the underlying findings,
rationale and conclusions. We disagree with the Examiner's conclusion that
the limitation in the preamble, directed to embedding the content prediction
instruction in a document being edited by a user, is not to be afforded
patentable weight. Answer 5. We also disagree with the Examiner's finding
that Whittle teaches this limitation. Answer 7 ( citing Whittle para. 77). The
preamble of claim 4 states "embedding content prediction instructions in a
document while the document is being edited by the user" and the claim
includes "embedding, by a computer, the content prediction instruction in
the document being edited by the user." Thus, we concur with the
Appellants' argument that the preamble is to be afforded patentable weight.
Appellants' Specification discusses this feature as occurring while the user is
reformatting calls, i.e. editing the data (see Specification para. 77). While
the discussion in paragraph 77 of Whittle identifies a document includes
embedded script, we do not find sufficient evidence to support the
Examiner's finding that such scripts are embedded while the document is
being edited. Accordingly, we do not sustain the Examiner's obviousness
rejection of claim 4.
With respect to claim 33 through 35, Appellants' assert the rejection is
in error for the same reasons. The Examiner's rejection of independent
claim 33 relies upon the same rationale as claim 4 and the Examiner has not
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Application 11/379,610
found the additional teachings of Kantrowitz '816 remedy the deficiencies
discussed above in the rejection of claim 4. Answer 24. Accordingly, we
similarly do not sustain the Examiner's rejection of claim 33 through 35.
Claims 10 and 21 through 24
Appellants argue on pages 12 through 15 and pages 9 through 12 of
the Reply Brief, that the Examiner's obviousness rejection of claim 10 and
24 is in error. Appellants' arguments present us with three issues did the
Examiner err in finding the combination of the references teaches: 1)
receiving a user input to select a plan for importing the content prediction
instructions; 2) the content prediction instruction is imported into the content
prediction logic in response to receiving a user update; and 3) a step which
determines that the content prediction instruction is in a queue.
The Examiner provides a detailed response to Appellants' arguments.
Answer 10-16. We have reviewed the Examiner's response and the
underlying findings, rationale and conclusions. We disagree with the
Examiner's rationale with respect to claim 21 and are persuaded of error by
Appellants' argument. However, Appellants' arguments are not
commensurate with the scope of claim 10, and we are accordingly not
persuaded of error.
Initially, as noted in our prior decision, which considered a claim
similar in scope with the currently appealed claim 10, independent method
claim 10 recites several limitations which are "responsive to" actions such as
receiving a document or user input, which are conditional limitations. As
such in considering the broadest reasonable interpretation of method claim
10, the steps dependent upon the condition would not necessarily be invoked
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and as such it is not incumbent upon the Examiner to show that the art
performs those steps. See Ex Parte Katz 2011 WL 514314 (BPAI Jan. 27
2011) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004)). The limitations at issue in Appellants' arguments, discussed
above, are all recited as being responsive to some condition, and as such
Appellants' arguments are not commensurate with the broadest reasonable
interpretation of method claim 10. Accordingly, we are not persuaded of
error in the Examiner's rejection of claim 10.
However, we reach a different conclusion with respect to system
claim 21 and computer readable medium claim 24, which stand similarly
rejected. Our decisions have drawn a distinction between method claims
and system/apparatus claims for purposes of conditional "if' language. See
Ex parte Gary M. Katz, 2011 WL 514314, *4--5 (BPAI 2011) (Interpreting a
similar "if' condition in a method claim.); see also Gary M. Katz, 2011 WL
1211248, *2 (BPAI 2011) (Denying request for rehearing.); and In re
Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006) ("[O]ptional elements do
not narrow the claim because they can always be omitted.").
With respect to the first issue the Examiner identifies the claim
limitation of receiving a user input to select a plan does not limit when the
input is received and could encompass pre-defined preferences. Answer 11.
Further, the Examiner identifies that "plan for importing" can be simply a
way in which the content prediction script is received. Answer 11. Based
on these findings the Examiner finds that Whittle's teaching of the control
passing script and client based preferences ( set by a user) to meet the
claimed user input to select a plan. Answer 11 ( citing Whittle para. 68).
Appellants' arguments, do not address this claim interpretation by the
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Examiner or the Examiner's findings regarding Whittle paragraph 68.
Accordingly, we are not persuaded of error in the rejection of claim 24 based
upon Appellants' arguments directed to the first issue.
However, Appellants' arguments directed to the third issue are
dispositive of the appeal of claim 24 as they have persuaded us of error in
the Examiner's rejection of claim 24. Appellants' arguments directed to the
third issue assert that Whittle, does not teach a determination is performed as
to whether a content prediction instruction is in a queue. Answer 15. The
Examiner responds to this argument stating:
the queue may be interpreted as simply a container for
instructions. There is no context as to the location of this
'queue' nor further details of its functionality. Thus, the claim
... involves determining if an instruction is being held
somewhere.
Answer 15-16. The Examiner finds that Whittle' s discussion of the OneE-
MaiPerContact parameter, teaches this limitation. Answer 16 ( citing Whittle
para. 102). We have reviewed the cited teachings and do not find sufficient
evidence to support the Examiner's finding that Whittle teaches that the
content prediction instruction is in a queue or that there is a step which
determines that the instruction is in the queue. Accordingly, we do not
sustain the Examiner's rejection of independent claim 24.
Independent claim 21 is similarly rejected and also contains a
limitation directed to a step which determines that the content prediction
instruction is in a queue. The Examiner's rejection of claim 21 relies upon
the same rationale as discussed with respect to claims 10 and 24. Final Act.
12. Accordingly, we do not sustain the Examiner's rejection of independent
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claim 21 and dependent claims 22 and 23, for the same reasons as discussed
above with respect to claim 24.
Dependent claims 14 through 20 and 28 through 30.
Claims 14 through 20 all depend upon method claim 10. Appellants
argue on pages 17 through 21 of the Brief, that the rejections of these claims
are in error. Each of these claims recites a limitation further limiting one of
the conditional steps of claim 10, e.g. claim 14 states "wherein the importing
step comprises;" where the importing step of claim 10 is dependent upon
"receiving the user update input" which itself depends upon several other
occurrences. Thus, in considering the broadest reasonable interpretation of
claims 14 through 20, the steps dependent upon the condition would not
necessarily be invoked and as such it is not incumbent upon the Examiner to
show that the art performs those steps. Accordingly, Appellants' arguments
directed to these claims are not commensurate with the broadest reasonable
scope of the claims and we sustain the Examiner's rejection of these claims.
Claims 28 through 30 depend upon independent claim 24. The
Examiner has not shown that the additional teachings of Kantrowitz '697
remedy the deficiency in the rejection of claim 24, accordingly, we do not
sustain the Examiner's rejection of these claims.
Dependent claims 37 through 39.
Claims 37 depends upon method claim 10. Appellants argue on pages
22 through 26 of the Brief that the Examiner's rejection is in error as none of
the references teaches a queue which contains content prediction instructions
as claimed. App. Br. 23. The Examiner in response to Appellants'
argument, states that Whittle discloses the use of content prediction
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instructions in a queue and that Brummel teaches that when an instruction is
removed from a queue a new instruction is moved to the top. Answer 25-
26. We disagree with the Examiner. Initially, we note that unlike the other
claims which depend upon claim 10, claim 37 is not further modifying a
conditional limitation, and thus the Examiner is required to show the
limitation. As discussed above with respect to claim 24, we disagree with
the Examiner's findings regarding Whittle teaching a queue for the
prediction instructions. Thus, we do not sustain the Examiner's rejection of
claim 37 for the same reasons discussed above with respect to claim 24.
Claims 3 8 and 3 9 depend upon independent claims 21 and 24
respectively. The Examiner has not shown that the additional teachings of
Brummel remedy the deficiency in the rejection of claims 21 and 24,
accordingly, we do not sustain the Examiner's rejection of these claims.
Dependent claim 40.
Claim 40 depends upon independent claim 3 3. The Examiner has not
shown that the additional teachings of Brummel remedy the deficiency in the
rejection of claim 33, accordingly, we do not sustain the Examiner's
rejection of this claim.
DECISION
We reverse the Examiner's rejection of claims 4, 21 through 24, 28
through 30, 33 through 35, and 37 through 40 under 35 U.S.C. § 103.
We affirm the Examiner's rejection of claims 10, 14 through 20,
under 35 U.S.C. § 103.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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