Ex Parte Clauson

Board of Patent Appeals and Interferences

Jul 26, 2012

10444630 (B.P.A.I. Jul. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/444,630 05/23/2003 Todd A. Clauson ITL.0990US (P16412) 5320
21906 7590 07/26/2012
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
AUGUSTINE, NICHOLAS
ART UNIT PAPER NUMBER
2141
MAIL DATE DELIVERY MODE
07/26/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TODD A. CLAUSON
____________________

Appeal 2009-014312
Application 10/444,630
Technology Center 2100
____________________

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
ERIC S. FRAHM, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014312
Application 10/444,630

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim 1
Exemplary claim 1 under appeal reads as follows:
1. A method comprising:
receiving menu-option reordering information; and
in response to the menu-option reordering information, reordering a
menu position occupied by at least one menu option.
Rejection on Appeal 2
The Examiner rejected claims 1-30 under 35 U.S.C. § 102(b)
as being anticipated by Microsoft Internet Explorer 6 (version:
6.0.2800.1106.xpsp1.020828-1920CO).
Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because:
It is clear that version 2800.1106 is the version of
Internet Explorer known as Version 6 for Microsoft XP
operation systems Service Pack 1. In the code above, it appears
that "XP" stands for the XP operating system and sp 1 stands
for service pack 1. This can be confirmed by the Microsoft
website. (See Microsoft.com and search Internet Explorer

1 Separate patentability is not argued for claims 2-30. Therefore, we treat
claim 1 as representative for purposes of this rejection.
2 “[T]he invention was patented or described in a printed publication in this
or a foreign country or in public use or on sale in this country, more than one
year prior to the date of the application for patent in the United States”
(35 U.S.C. § 102(b))(emphasis added).
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Application 10/444,630

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history). Microsoft's website also has information about Internet
Explorer 6 service pack 1. It states that it was published on
09/21/2005. See document attached . . .
Thus; while the Examiner may be correct that Internet
Explorer 6 was published in 2001, it is clear that Internet
Explorer 6 service pack 1 was published for Internet Explorer
XP and Server Software 2003, which came much later.
(App. Br. 12).
2. Appellant also contends that the Examiner erred in rejecting
claim 1 because:
[T]he Office has not established that the material cited is prior
art. The reliance on the copyright notice is insufficient to show
a date of publication. None of the material cited shows any date
of publication. Moreover, the material cited has been altered by
typing additional material on it. It is inappropriate to cite as
prior art material which has been modified by the Office.
As explained in M.P.E.P. § 706.02aI, the Examiner must
determine the issue of publication of the reference so that a
proper comparison between the application and reference dates
can be made. Further, it is stated, under the heading of Date of
Availability, that if the publication does not include a
publication date it cannot be relied on as prior art. See M.P.E.P.
Revision 3, August, 2005, M.P.E.P. at page 2100-72.
(App. Br. 12).
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being anticipated because
the evidence provide by Appellant establishes that Microsoft Internet
Explorer 6 (version 6.0.2800.1106.xpspl.020828-1920CO) was not in public
use or on sale more than one year prior to the date of Appellant’s application
for patent?
Did the Examiner err in rejecting claim 1 as being anticipated merely
because the Office has not established that the material cited is prior art?
Appeal 2009-014312
Application 10/444,630

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
numerous arguments that the Examiner has erred.
We disagree with Appellant’s conclusions. We agree with (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief. We concur
with the conclusions reached by the Examiner.
As to Appellant’s above contention 1, Appellant’s Exhibit B is not
relevant as it is not directed to Internet Explorer 6 for Windows XP.
Appellant has provided only a single page as Exhibit B, that page lists the
version as 6_sp1 and does not list the “xpsp1” version upon which the
Examiner relies. Although Appellant has not provided the full document as
Exhibit B, we have reviewed that full document at Microsoft.com and find
that it explicitly states that the document is directed to “Internet Explorer 6
SP1, the latest version of Internet Explorer for users not running Windows
XP.” (Emphasis added).
Further, as to Appellant’s Exhibit A, we find it similarly lacking as it
is also primarily a discussion of the latest update for Internet Explorer 6 SP1
only and not an update to xpsp1. Although Exhibit A mentions other
versions of Internet Explorer 6 including both the “Internet Explorer 6
Service Pack 1 for Windows XP” and “Internet Explorer 6 for Windows XP
Service Pack 2”; in neither case does Exhibit A indicate that these versions
are the same as the “Internet Explorer 6 SP1” version.
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Application 10/444,630

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Appellant’s Exhibit A and Exhibit B are not sufficient evidence to
raise any question as to the on sale date established by the Examiner.
Therefore, we find it unnecessary to review the additional evidence cited by
the Examiner in the Answer.
As to Appellant’s above contention 2, we disagree that the Examiner
erred. Non-prior art publications can be used as evidence of sale before the
critical date. Cf. In re Epstein, 32 F.3d 1559 (Fed. Cir. 1994) (Abstracts
which were not themselves prior art publications were properly relied as
providing evidence that the software products referenced therein were “first
installed” or “released” more than one year prior to applicant’s filing date.)
See also MPEP 2133.03(b)IV.3
Further, we deem to be without merit, Appellant’s argument that it
was inappropriate to for the Examiner to provide analytical notations on the
cited material.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-30 as being
anticipated under 35 U.S.C. § 102(b).
(3) Claims 1-30 are not patentable.

3 Appellant argues as though the Examiner’s basis of rejection were that the
invention was patented or described in a printed publication in this or a
foreign country, more than one year prior to the date of the application for
patent in the United States. There is no such rejection before us. The basis
of rejection is that the invention was in public use or on sale in this country,
more than one year prior to the date of the application for patent in the
United States.
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Application 10/444,630

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DECISION
The Examiner’s rejection of claims 1-30 is affirmed.

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

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