Ex Parte Dettinger et al

Board of Patent Appeals and Interferences

Nov 16, 2010

10803603 (B.P.A.I. Nov. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD D. DETTINGER and CALE T. RATH
____________

Appeal 2009-005742
Application 10/803,603
Technology Center 2100
____________

Before JAMES D. THOMAS, JOHN A. JEFFERY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 4-21, and 24-31. Claims 2, 3, 22, and 23
have been cancelled. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We affirm.

Invention
Appellants’ invention is directed to annotations. More particularly,
the invention on appeal is directed to “tracking the status of annotations
based on data contained therein.” (Spec. 1, ll. 8-9).

Claim 1 is illustrative:
1. A method for tracking the status of an
annotation, comprising:

creating an annotation record comprising one or
more fields for storing annotation data comprising the
annotation;

retrieving annotation data stored in the annotation
record;

applying a set of state rules to determine a first
state of the annotation based on the annotation data; and

receiving additional annotation data;

updating the annotation record with the additional
annotation data; and

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applying the set of state rules to determine a
second state of the annotation based on the annotation
data in the updated annotation record;

providing an indication that the state of the
annotation has changed from the first state to the second
state.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Bays US 6,519,603 B1 Feb. 11, 2003
Setya US 2006/0111953 A1 May 25, 2006

Appellants appeal the following rejection:
Claims 1, 4-21, and 24-31 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Bays and Setya.

APPELLANTS’ CONTENTIONS
Appellants contend that “neither Bays, nor Setya, alone or in
combination, teach[s] or suggest[s] the claim limitations of ‘applying a set of
state rules to determine a first state of an annotation based on annotation
data’ and ‘applying the set of state rules to determine a second state of the
annotation based on the annotation data in the updated annotation record.’”
(App. Br. 13).
In particular, Appellants contend that Bays’ teaching of filtering or
transforming data has no relation to states of annotations. (App. Br. 13-14;
see also Reply Br. 3-4).

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ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:
Under § 103, did the Examiner err in finding that the
combination of Bays and Setya would have taught or
suggested: “applying a set of state rules to determine a
first state of the annotation based on the annotation data”
and “applying the set of state rules to determine a second
state of the annotation based on the annotation data in the
updated annotation record,” within the meaning of
representative claim 1?

GROUPING OF CLAIMS
Based on Appellants’ arguments in the Briefs, we decide the appeal
on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

FACTUAL FINDINGS (FF)
We adopt the Examiner’s findings in the Answer and Final Office
Action, with respect to the limitation at issue, as our own. (Ans. 4-5).
We add the following factual findings:
1. Appellants’ Specification discloses:
[0041] Each state rule may be a combinations [sic.] of
one or more logical statements that examine the contents
of one or more of the fields.

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[0042] For some embodiments, more complex rules (than
those based solely on the existence or absence of data)
may also be created, for example, that define a state of an
annotation based on the presence of specified strings in a
text field.
(Spec. 11)(emphasis added).

2. Bays teaches filtering and transforming entered annotation content.
(Col. 3, ll. 25-26).
3. Bays teaches the looping (i.e., successive) propagation of selected
annotations to target data items or data item types according to an
administrators’ determination. (Col. 10, ll. 21-23, 40-52).

ANALYSIS
Based upon our review of the record, we find unconvincing
Appellants’ argument that “neither Bays, nor Setya, alone or in combination,
teach[s] or suggest[s] the claim limitations of ‘applying a set of state rules to
determine a first state of an annotation based on annotation data’ and
‘applying the set of state rules to determine a second state of the annotation
based on the annotation data in the updated annotation record.’” (App. Br.
13).
We begin our analysis with claim construction.
“In the patentability context, claims are to be given their broadest
reasonable interpretations. . . . [L]imitations are not to be read into the
claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). Any special meaning assigned to a term
“must be sufficiently clear in the specification that any departure from
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common usage would be so understood by a person of experience in the
field of the invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d
1473, 1477 (Fed. Cir. 1998).
Absent an express intent to impart a novel meaning to a claim term,
the words take on the ordinary and customary meanings attributed to them
by those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive
Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted).
Here, Appellants have not established where a definition is set forth in
the Specification that provides an artisan with notice of a special or
uncommon meaning for the disputed claim terms “state rules” and “state of
the annotation.” (Claim 1).2
Based upon our review of Appellants’ Specification, we find an
exemplary description of state rules, as follows:
more complex rules (than those based solely on the
existence or absence of data) may also be created, for
example, that define a state of an annotation based on the
presence of specified strings in a text field.

(FF 1)(underlining added).

2 While Appellants contend that Bays “simply does not disclose the
present claims” (Reply Br. 4), Appellants do not argue a particular meaning
or definition for the disputed claim terms. Nor have Appellants established
in the record a common or plain meaning for the claim terms “state rules”
and “state of the annotation,” for example, by providing a dictionary
definition. In addition, there is no declaration of record to consider as
evidence regarding the intended metes and bounds of the claimed “state
rules” and “state of the annotation.”
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Given the breadth of Appellants’ Specification (Id.), we conclude that
the Examiner’s broader interpretation of the claimed “state rules” and “state
of the annotation” is reasonable. (See Ans. 16-17). In particular, we agree
that defining a state of an annotation based on the presence of specified
strings in a text field (FF 1) is a type of filtering using state rules. Thus, we
find no support in the record for Appellants’ contention that “the Examiner
has broadened the claims well past the bounds of the Application as read by
a person having ordinary skill in the art.” (Reply Br. 4).
Given the Examiner’s broad but reasonable claim interpretation, we
are in accord with the Examiner’s finding that Bays’ filtering and
transforming entered annotation content (FF 1) would have taught or
suggested the claimed “applying a set of state rules to determine a first state
of the annotation based on the annotation data.” (Claim 1).
Regarding the second argued limitation of “applying the set of state
rules to determine a second state of the annotation based on the annotation
data in the updated annotation record” (claim 1), we find Appellants have
failed to address the Examiner’s specific findings regarding the annotation
propagation loop illustrated by blocks 175 and 180. (Ans. 5; see also Bays,
Fig. 3D).
On this record, we agree with the Examiner that the claimed updating
of the annotation record to a second state of annotation that is determined
using applied state rules would have been taught or suggested by Bays
looping or successive propagation of selected annotations to target data
items or data item types according to an administrators’ determination. (FF
3).

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CONCLUSION
On this record, we find no reversible error in the Examiner’s
underlying factual findings and ultimate legal conclusion of obviousness
regarding the specific limitations disputed by Appellants. Therefore, we
sustain the Examiner’s obviousness rejection of representative claim 1, and
of claims 4-21, and 24-31 (not argued separately), which fall therewith. See
37 C.F.R. § 41.37(c)(1)(vii).

DECISION
We affirm the Examiner’s § 103 rejection of claims 1, 4-21, and
24-31.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED

pgc

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