Ex Parte Hutchison et al

Patent Trial and Appeal Board

Oct 7, 2016

13557746 (P.T.A.B. Oct. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/557,746 07/25/2012 Gordon Douglas HUTCHISON
73109 7590 10/12/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
GB920070002US2
8152-0203
CONFIRMATION NO.
6632
EXAMINER
WU,DAXIN
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
10/12/2016 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GORDON DOUGLAS HUTCHISON,
DAVID GEOFFREY SCREEN, and JOSEPH ROBERT WINCHESTER
Appeal2015-006536
Application 13/557,746
Technology Center 2100
Before ERIC S. FRAHM, CATHERINE SHIANG, and JOHN D.
HAMANN, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-12 and 24--32, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Introduction
The present invention relates to determining a set of candidate code
insertions for insertion in program code. See generally Spec. 1. Claim 1 is
exemplary:
Appeal 2015-006536
Application 13/557 ,746
1. A method, implemented by at least one computer
processor, for determining a set of candidate code insertions for
insertion in program code, said method comprising:
receiving an indication of a position in a section of
program code at which a code insertion may be performed;
determining a required type of said code insertion based
upon syntax of said program code;
identifying a set of possible code insertions at said
position in said section of program code based upon the
required type;
identifying, from a possible code insertion in said set of
possible code insertions, an available expression for providing a
further possible code insertion;
adding said further possible code insertion to said set of
possible code insertions; and
providing a set of candidate code insertions for selection
by a user for insertion at said indicated position in said section
of program code based upon said set of possible code
insertions.
References and Rejections
Claims 1-12 and 24----'32 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-12
of U.S. Patent No. 8,307,335.
Claims 1-12 and 24--32 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hawley (US 2005/0125773 Al, pub. June 9, 2005).
Claims 2 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hawley and Joisha (US 2007/0198617 Al, pub. Aug. 23,
2007).
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hawley and Glaser (US 5,953,731, iss. Sept. 14, 1999).
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Application 13/557 ,746
Claims 7 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hawley and Kothari (US 7,665,061 B2, iss. Feb. 16,
2010).
Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hawley, Kothari, and Smith (US 2005/0166193, pub. July 28, 2005).
Claims 10 and 31 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hawley and Swaminathan (US 2005/0065930 Al, pub.
Mar. 24, 2005).
ANALYSIS
Non-Statutory Double Patenting
Because Appellants do not contest the merits of the rejection, we
summarily sustain the Examiner's rejection of claims 1-12 and 24--32 on the
ground of non-statutory double patenting. See Ans. 3-5.
Obviousness
We have reviewed the Examiner's rejections in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in finding Hawley teaches "identifying a
set of possible code insertions at said position in said section of program
code based upon the required type; identifying, from a possible code
insertion in said set of possible code insertions, an available expression for
providing a further possible code insertion; adding said further possible
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Appeal 2015-006536
Application 13/557 ,746
code insertion to said set ofpossible code insertions," as recited in
independent claim 1 (emphasis added). 1
The Examiner initially maps the claimed "a set of possible code
insertions" and "a further possible code insertion" to Hawley's list 250 and
list 350, respectively. See Final Act. 19. 2 In the Answer, the Examiner
maps the claimed "a set of possible code insertions" and "a further possible
code insertion" to Hawley's list 140 and list 250, respectively. See Ans. 7.
We disagree. Hawley states:
[0047] If the user desires to insert a MOVE statement at the
current cursor position 120, then the user may scroll down the
list 140 until a MOVE keyword proposal is displayed. The user
may then select the MOVE keyword proposal to be inserted
which results in the window 210 of FIG. 2 in which the MOVE
keyword 220 is inserted in the partial program statement 230,
and in which the current cursor position 240 is moved after the
inserted keyword. Responsive to the partial program statement
230 now comprising the MOVE keyword 220, the code assist
function suggests further proposal candidates 250 for insertion
at the now current cursor position 240.
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
2 The Examiner also cites Hawley's Figures 6, 7, and 12, and paragraphs 51
and 84. See Final Act. 7. But the Examiner does not explain, and we do not
speculate, how such Hawley portions teach the italicized claim limitations
under the Examiner's mapping. The Examiner further cites U.S. Publication
No. 2006/0026559 for the known concept of "adding an item to a set of
items," but does not cite that publication for rejecting claim 1. See Final
Act. 6-7. As pointed out by Appellants, that citation is insufficient for the
rejection, because the Examiner does not rely on the publication for rejecting
claim 1, and has not provided articulated reasoning with some rational
underpinning as to why one skilled in the art would have modified Hawley
to incorporate the teachings of the publication. See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); App. Br. 14--15.
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Appeal 2015-006536
Application 13/557 ,746
[0048] If the user selects the CORR keyword proposal 260 for
the next insertion at the current cursor position 240, the
window 310 of FIG. 3 results in which the CORR keyword 330
has been inserted at the end of the partial program statement
320 and in which the current cursor position 340 is moved after
the inserted keyword 330. Responsive to the partial program
statement 320 now comprising the MOVE and CORR
keywords, the code assist function suggests further proposal
candidates 350 for insertion at the now current cursor position
340. Based upon the syntax of the MOVE program statement,
the code assist function suggests proposal candidates
comprising identifiers or variables declared within the program
which may follow the MOVE statement CORR keyword.
Hawley i1i147--48 (emphases added).
Therefore, contrary to the Examiner's assertion (Final Act. 19),
Hawley does not teach adding list 350 to list 250. See App. Br. 12-14. We
agree with Appellants that in comparison with list 250, list 350 appears at a
later step in the iteration, and list 350 is not added to list 250 in Hawley. See
App. Br. 12-14; Hawley i1i147--48. Similarly, Hawley does not teach adding
list 250 to list 140. See Reply Br. 9-10. We agree with Appellants that in
comparison with list 140, list 250 appears at a later step in the iteration, and
list 250 is not added to list 140 in Hawley. See Reply Br. 9-10; Hawley
i-fi-147--48. As result, the Examiner has not shown Hawley teaches "adding
said further possible code insertion to said set of possible code insertions,"
as required by independent claim 1.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner's rejection of claim 1.
Independent claim 24 recites a claim limitation that is substantively
similar to the disputed limitation of claim 1. See claim 24. Therefore, for
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Appeal 2015-006536
Application 13/557 ,746
similar reasons, we reverse the Examiner's rejection of independent claim
24.
We also reverse the Examiner's rejection of dependent claims 2-12
and 25-32, which depend from independent claims 1 and 24.
DECISION
We affirm the Examiner's decision rejecting claims 1-12 and 24--32
on the ground of non-statutory double patenting.
We reverse the Examiner's decision rejection claims 1-12 and 24--32
under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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