10228662 (B.P.A.I. Jun. 5, 2009)

Ex Parte Gritzbach et al

Board of Patent Appeals and InterferencesJun 5, 2009

10228662 (B.P.A.I. Jun. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RALPH GRITZBACH, RAINER KUTH, and CHRISTOPH ZINDEL ____________ Appeal 2008-001922 Application 10/228,662 Technology Center 2100 ____________ Decided:1 June 8, 2009 ____________ Before JAMES D. THOMAS, LANCE LEONARD BARRY, and ST. JOHN COURTENAY III, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. Â§ 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-001922 Application 10/228,662 2 STATEMENT OF THE CASE The Patent Examiner rejected claims 1-17; the Appellants appealed therefrom under 35 U.S.C. Â§ 134(a); and we affirmed. The Appellants now request rehearing. ISSUE The Appellants argue that "there is no possibility in the Alam et al reference to select text data in the header, and then include only the selected text data in the output data file." (Req. Reh'g 4.) Therefore, the issue is whether the Appellants have shown error in the finding that the combined teachings of Alam and AAPA would have suggested selecting some of all text data for inclusion in an output file. LAW "In the initial examination of patent applications, admissions by the applicant are considered for any purpose including evidence of obviousness under section 103." Ex parte McGaughey, 6 USPQ2d 1334, 1338 (BPAI 1988) (citing In re Nomiya, 549 F.2d 566 (CCPA 1975); In re Hellsund, 474 F.2d 1307 (CCPA 1973); and In re Garfinkel, 437 F.2d 1000 (CCPA 1971)). Appeal 2008-001922 Application 10/228,662 3 FINDINGS OF FACT ("FFs") 1. The Appellants offer the following description of Alam. The Alam et al reference discloses a conventional editor that, among other things, can produce a format conversion. For this purpose, the Alam et al reference discloses making a complete file available to a user, independently of its initial format, and to allow the user to make a free selection of the contents that the user would like to include in the ending file. (Appeal Br. 7.) 2. They also offer the following description of the same reference. The Alam et al reference does not disclose a simple conversion wherein image data are used, but instead discloses an editor in which a given file can be nearly arbitrarily edited, independently of to what extent, if at all, it comprises text data and/or image data, and the result of the editing then can be converted. As a result, text may have been adopted, selected, deleted, changed, newly created, etc. to an arbitrary extent in accordance with the teachings of Alam et al. (Appeal Br. 8 (emphasis added).) They also explain that "[w]ith regard to the teachings of Alam et al, the most important point is that the arrangement disclosed therein is an editor, not a converter" (id. at 9) and that "[w]ith regard to the text data in Alam et al, not only is a selection possible, but also a deletion, modification and/or an addition" (id. (emphasis added)). ANALYSIS The Examiner's rejections are based on combination of references that include Alam and AAPA. Fort their part, the Appellants have admitted that Alam allows a user to select contents of a file for inclusion in an ending file. Appeal 2008-001922 Application 10/228,662 4 (FF 1.) They have also admitted that the same reference allows the selection to be made of text data. (FF 2.) CONCLUSION Based on the aforementioned facts and analysis, we conclude that the Appellants have shown no error in the finding that the combined teachings of Alam and AAPA would have suggested selecting some of all text data for inclusion in an output file. DECISION We have granted the Appellants' request to consider their aforementioned argument, but decline their request to modify our affirmance of the rejections of claims 1-17. No time for taking any action connected with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1)(iv). DENIED rwk SCHIFF HARDIN, LLP PATENT DEPARTMENT 6600 SEARS TOWER CHICAGO, IL 60606-6473