Ex Parte Lunati

Board of Patent Appeals and Interferences

Sep 20, 2010

10870269 (B.P.A.I. Sep. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHANE LUNATI
____________

Appeal 2009-007694
Application 10/870,269
Technology Center 2100
____________

Before JOHN A. JEFFERY, THU A. DANG, and DEBRA K. STEPHENS,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-73. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

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.
Appeal 2009-007694
Application 10/870,269

2
STATEMENT OF THE CASE
Appellant invented a method and computer readable medium for
correcting electronic text. See generally Spec. 1. Claim 1 is reproduced
below with the key disputed limitations emphasized:
1. A method for displaying and allowing the correction of a
plurality of errors in an electronic text entered by a user, comprising:
displaying the electronic text on a page of an application on a
client station;
sending the electronic text from the client station to an error
checking routine;
processing the electronic text using the error checking routine to
create a correction file, wherein the correction file provides correction
information for each of the plurality of errors in the displayed
electronic text;
sending the correction file to the client station;
updating the displayed electronic text on the page of the client
station using the correction file, wherein each of the plurality of errors
is concurrently highlighted on the page, and wherein each highlighted
error is selectable by the user in any order to access the correction
information for each error.

The Examiner relies on the following as evidence of unpatentability:
Freelander US 2005/0149867 A1 July 7, 2005
(filed Dec. 26, 2003)

Buchheit US 2005/0262203 A1 Nov. 24, 2005
(filed Mar. 31, 2004)

Appeal 2009-007694
Application 10/870,269

3
THE REJECTIONS
1. The Examiner rejected claims 1-3, 5-7, 9-13, 15, 17-19, 21-23, 25,
27-30, 32-34, 36, 38-42, 45-48, and 50-71 under 35 U.S.C. § 102(e) as
anticipated by Buchheit. Ans. 2-10.2
2. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Buchheit. Ans. 11.
3. The Examiner rejected claims 4, 14, 16, 20, 24, 26, 31, 35, 37, 43,
44, 49, 72, and 73 under 35 U.S.C. § 103(a) as unpatentable over Buchheit
and Freelander. Ans. 11-14.

CLAIM GROUPING
Regarding the § 102 rejection, Appellant argues the following claim
groupings separately: (1) claims 1-3, 5, 6, 9-13, 15, 17-19, 21-23, 25, 27-30,
32-34, 36, 38-42, 45-48, 50-713 and (2) claim 7. See Br. 15-19. As for the
§ 103 rejections, Appellant argues the following claim groupings separately:
(3) claims 4, 14, 20, 24, 31, 35, 43, 49, and 72,4 and (4) claims 16, 26, 37,
44, and 73. See Br. 19-22. Accordingly, we select claims 1, 4, and 16 as

2 Throughout this opinion, we refer to the Appeal Brief filed April 14, 2008
and the Examiner’s Answer mailed November 6, 2008.
3 Dependent claims 2, 3, 5, 6, 9-13, 15, 17, 19, 21-23, 25, 27, 29, 30, 32-34,
36, 38, 40-42, 46-48, 51-55, 57-61, 63-67, and 69-71 were not argued. See
Br. 15-19. Additionally, while independent claims 1, 18, 28, 39, 45, 50, 56,
62, and 68 are nominally argued separately (see Br. 17-18), each has
limitations commensurate with claim 1 (see Br. 15-16). Accordingly, we
group all these claims together.
4 Dependent claims 14, 20, 24, 31, 35, 43, 49, and 72 are not separately
argued. See Br. 19-22. Accordingly, they are grouped with group (3).
Appeal 2009-007694
Application 10/870,269

4
representative of groups (1), (3), and (4), respectively. See 37 C.F.R.
§ 41.37(c)(1)(vii). Also, claim 8 was not argued (see Br. 19-22) but will be
addressed separately.

THE ANTICIPATION REJECTION OVER BUCHHEIT
Claims 1-3, 5, 6, 9-13, 15, 17-19, 21-23, 25, 27-30,
32-34, 36, 38-42, 45-48, and 50-71

Regarding representative independent claim 1, the Examiner finds that
Buchheit discloses all recited limitations. Ans. 3. Specifically, the
Examiner states that Buchheit’s Figure 9B discloses (1) displaying the
electronic text on a page of a client station, and (2) updating the displayed
electronic text on the page when the user selects a misspelled word and
inserts the chosen word into the page. Ans. 3, 15. Referring to paragraph
seventy-eight, Appellant argues Buchheit fails to update the electronic text
on the application’s page as recited. Br. 17. Rather, Appellant contends that
the electronic text is displayed on one page where the text was entered by
the user and updated on a new page or window. See Br. 17-18.
The issues before us, then, are as follows:

ISSUES
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Buchheit discloses (a) displaying the electronic text on an application’s
page of a client station and (b) updating the displayed electronic text on the
page of the client station?

Appeal 2009-007694
Application 10/870,269

5
FINDINGS OF FACT
1. Buchheit discloses a screenshot of text composed by the user.
The user can decide to conduct a spell check by selecting “Spell Check”
item 818 from a “move actions” pull-down list. Buchheit, ¶¶ 0023, 0079;
Fig. 9A.
2. In response to the “spell check” action, Buchheit’s conversation
assistant 110, located within the client 104, sends the composed message to
the conversation management system 102. The conversation assistant 110
then receives a spell-checked copy of the message and display instructions at
802. Using the instructions, the conversation assistant 110 highlights each
potentially misspelled word at 804, associates each highlighted word with a
list of candidate words generated at 806, and displays the re-formatted
message in a separate browsing window at 808. Buchheit, ¶¶ 0038, 0078;
Figs. 1, 8.
3. Buchheit shows a screenshot of three separate browsing windows
(e.g., 820, 830, 840) at different stages of a spell-check process. The top or
first window 820 contains a spell-checked copy of the message with three
potentially misspelled words (e.g., “supprt” 821, “delying” 823, and
“moive” 825) highlighted. When the user selects a word (e.g., “delying”
823), a spell-check window (e.g., 832) appears with a list of candidate words
(e.g., 834) as shown in a second or middle browser window 830. The user
can then choose the correct word (e.g., “delaying”) to replace a misspelled
word as shown in window 840. Buchheit, ¶ 0080; Fig. 9B.
Appeal 2009-007694
Application 10/870,269

6
4. Buchheit’s windows 820, 830, and 840 all have a “Spell Check”
title bar, vertical and horizontal scroll bars, and a “Done” tab 845. Buchheit,
Fig. 9B.
5. Appellant shows the updated page has changes to the text (e.g.,
highlights) along with changes to the page (e.g., Attach, Save, Cancel, Print
icons are missing). Spec. ¶¶ 0025, 0029; Figs. 5-6.

ANALYSIS
We begin by construing the key disputed limitations of claim 1 which
calls for, in pertinent part, displaying the electronic text on an application’s
page and updating the displayed electronic text on the page. Claim 1 recites
the electronic text entered by the user in the preamble and then recites
various steps involving the electronic text. However, contrary to
Appellant’s assertions (Br. 17-18), the later steps of displaying and updating
the text on a page are not limited to the page where the text was entered.
Additionally, while claim 1 recites (1) displaying the electronic text on an
application’s page; (2) sending the text to an error checking routine; (3)
processing the text using the routine to create a correction file; and (4)
sending the correction file to the client station, there is no express or implicit
requirement that step (1) (i.e., displaying the electronic text) be performed
first. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir.
2003) (internal citations omitted). Thus, giving this claim its broadest
reasonable construction, we find that the step of displaying the electronic
Appeal 2009-007694
Application 10/870,269

7
text on an application’s page in claim 1 can occur after sending the
correction file to the client station and still be consistent with the express
language of claim 1.
Buchheit discloses that the same electronic text entered by the user
(e.g., Fig. 9A; see also FF 1) is also displayed later on an application’s page
(e.g., top window in Fig. 9B shows a spelled-check copy of the message; see
also FF 3). While Buchheit shows more information (e.g., three potentially
misspelled and highlighted words 821, 823, 825) on the page containing the
electronic text (FF 3), this does not detract from Figure 9B showing the
electronic text being displayed on a page at the client station as recited in
claim 1. Additionally, as the Examiner explains (Ans. 15), when the user
selects a word to correct (e.g., “delying” 823), a spell-check window appears
with a candidate list. See FF 3. The user can also choose the correct word
(e.g., “delaying”) to replace a misspelled word on the page as shown by
window 840, thereby updating the text on a page. Id. Buchheit therefore
also discloses the displayed electronic text is updated on the application page
as recited in claim 1.
Buchheit characterizes windows 820, 830, and 840 in Figure 9B as
separate browsing windows, but also indicates that each window shows
different stages of the spell-check process. FF 3. Notably, each of these
windows has the exact same features – namely the “Spell Check” title, the
vertical and horizontal scroll bars, and the “Done” tab 845. See FF 4. Also,
Appellant’s updated page has slight changes (e.g., adds highlights and
removes Attach, Save, Cancel, Print icons) to the text, but is still considered
the same page. See FF 5. We therefore find that, while Bucheit’s windows
Appeal 2009-007694
Application 10/870,269

8
are described as separate, the screenshots merely show the same page at
different times during the spell-check process with corresponding changes or
updates.
For the foregoing reasons, Appellant has not shown error in the
anticipation rejection of independent claim 1 over Buchheit. We therefore
sustain the rejection of claim 1, and claims 2, 3, 5, 6, 9-13, 15, 17-19, 21-23,
25, 27-30, 32-34, 36, 38-42, 45-48, and 50-71 which fall with claim 1.

Claim 7
The Examiner finds that Buchheit discloses all recited limitations in
claim 7. Ans. 4. Appellant asserts that Buchheit discloses replacing
misspelled words in a separate browsing window, and not “in the displayed
electronic text of the page” as recited. Br. 19 (emphasis omitted). We are
not persuaded for the reasons discussed regarding claim 1. We therefore
sustain the rejection of claim 7.

THE OBVIOUSNESS REJECTION OVER BUCHHEIT
Claim 8 depends from claim 7 but is not separately argued. See Br.
15-22. Since Appellant has not rebutted the Examiner’s obviousness
rejection for claim 8 (Ans. 11), we therefore sustain the rejection of claim 8
for similar reasons as those in connection with claim 7.

Appeal 2009-007694
Application 10/870,269

9
THE OBVIOUSNESS REJECTION OVER BUCHHEIT AND FREELANDER
Claims 4, 14, 20, 24, 31, 35, 43, 49, and 72
Regarding representative claim 4, the Examiner finds that Buchheit
discloses all recited limitations, except for the error checking routine being
within the client station. Ans. 11-12. Freelander is cited to cure this
deficiency. Ans. 12. Appellant argues Freelander teaches that the spell
check application on the client (e.g., mobile device) offloads the spell-check
processing to the server, and does not carry out the spell-check processing or
error checking routine as recited. Br. 19-21.
The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 4 by finding
that Buchheit and Freelander collectively would have taught or suggested
the error checking routine residing within the client station?

ADDITIONAL FINDINGS OF FACT
6. Freelander’s spell checking application 120 resides on a computing
device (e.g., 100, 200) and provides operations related to a spell checking
operation. Freelander, ¶¶ 0015, 0019; Figs. 1-2.
7. Freelander discloses an illustrative spell check system (see title
“Illustrative Spell Check System” between ¶¶ 0023-24) having a spell check
application 312 at the server 310 and spell check applications 322 and 332 at
computing devices 320 and 330. Freelander, ¶¶ 0024-36; Fig. 3.

Appeal 2009-007694
Application 10/870,269

10
ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 4 which calls for, in pertinent
part, the error checking routine to reside within the client station. First,
claim 4 does not require the entire error checking routine to reside within the
client station. Buchheit’s conversation assistant 110, which resides within
the client, receives a copy of the composed message and display instructions.
See FF 2. Based on the instructions, this assistant (1) highlights each
potentially misspelled word; (2) associates each word with a list of candidate
words generated at step 806; and (3) displays the reformatted message in a
browsing window at step 808. See id. Buchheit’s assistant, residing on a
client station, therefore is part of the error checking routine as recited.
Notwithstanding the strength of this teaching, we nonetheless find no
error in the Examiner’s reliance on Freelander which only further bolsters
Buchheit’s teachings. We agree with the Examiner (Ans. 18) that
Freelander’s Figure 3 embodiment is only an illustrative example of where
the error checking routine resides. See FF 7. Notably, Freelander’s spell
checking application (e.g., 120, 322, 332) resides on the computing device
(e.g., 100, 200, 320, 330) (i.e., client station (see FF 6-7)) and provides
functionality related to a spell-checking operation (see FF 6). Thus, contrary
to Appellant’s contentions (Br. 20-21), Freelander envisions that at least
some operations, other than offloading, of the error checking routine will
reside within the client station. We therefore find that Freelander further
teaches residing the error checking routine within the client station as
required by claim 4.
Appeal 2009-007694
Application 10/870,269

11
For the above reasons, we will sustain the rejection of claim 4, and
claims 14, 20, 24, 31, 35, 43, 49, and 72 which fall with claim 4.

Claims 16, 26, 37, 44, and 73
Regarding representative claim 16, the Examiner finds that Buchheit
discloses all recited limitations, except for the correction file comprising
adding format codes to an electronic text’s base code. Ans. 13. Freelander
is cited to cure this deficiency. Ans. 13-14. Appellant argues that
Freelander’s embedded code in Figure 7 is not a format code or information
that alters the display of error to the user, but rather a tag to provide the user
with results and suggestions for errors. Br. 21-22.
The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 16 by finding
that Buchheit and Freelander collectively would have taught or suggested
the correction file comprises adding format codes to an electronic text’s base
code?

ADDITIONAL FINDINGS OF FACT
8. Freelander teaches an HTTP response 700 includes spell check
results 710 having a flagged words section 715 and a suggestion section 750
written in XML. The suggestion section 750 has a suggestion list 760 (e.g.,
“hello,” “halo,” “helot,” “hellos,” “hell,” “help”) for a flagged or misspelled
word (e.g., “helo”). Freelander, ¶¶ 0036-38; Fig. 7.
Appeal 2009-007694
Application 10/870,269

12
9. Appellant states the code can be added to the base HTML code of
the correction file to correct a misspelled word (e.g., “colection”). For
example, the code can include option values, including “collection,”
“collections,” “collocation,” and “collocations.” The added code around the
error makes the error actively correctable, such as pop-up information. See
Spec. ¶¶ 0040-41.

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of claim 16 which calls for, in pertinent part, creating
the correction file by adding format codes to the electronic text’s base code.
As discussed above, Buchheit discloses in Figure 9B the error checking
routine results includes a corrected file that displays the electronic text on a
page or window along with correction information (e.g., highlighted
potentially misspelled words 821, 823, 825 and candidate list 834) related to
the those words. See FF 3. Accounting for the inferences and creative steps
an ordinarily skilled artisan would have employed based on Buchheit’s
teaching, such an association of the text with the correction information
would have been recognized as requiring additional coding (e.g., format
codes) in conjunction with the base code (e.g., code for the actual text) to
achieve this display. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). Buchheit, thus, at the very least, suggests from its figures and
accompanying discussion (see FF 2-3) that the correction file comprises
additional coding (e.g., for highlights and suggested alternatives) to
associate and display the electronic text with the correction information.
Appeal 2009-007694
Application 10/870,269

13
Freelander further illustrates this point. Freelander’s spell-check
results include flagged words and suggestion sections. FF 8. For example,
the suggestion section includes a suggestions list 760 (e.g., “hello,” “halo,”
“helot,” “hellos,” “hell,” “help”) for a flagged misspelled word (e.g.,
“helo”). Id. Freelander thus teaches that each misspelled word has
additional code related to the text so as to provide suggestions for a
misspelled word. Additionally, when combined with Buchheit’s teaching
that ties the potentially misspelled word with suggestions as a list (see FF 3,
6), such suggested words and the related format codes must be added or
associated with the electronic text to display the suggested list on the screen
as shown in Figure 9B. Thus, while claim 16 does not require the format
codes to be information regarding the display of the errors to the user (Br.
22), Buchheit and Freelander nonetheless collectively teach that such format
coding added to the text’s base code will affect how the errors are displayed.
Lastly, our construction of claim 16 is consistent with Appellant’s
disclosure. Appellant refers us to paragraphs thirty-nine through forty-one
of the Specification for support. See Br. 8. Similar to Freelander (FF 8),
Appellant states coding (e.g., option values “collection,” “collections,”
“collocation,” “collocations”) can be added to the base code to correct a
misspelled word (e.g., “colection”). See FF 9. Additionally, similar to
Buchheit’s candidate list (see FF 3), Appellant discloses the added format
code to the text’s base code makes the text actively correctable, such as pop-
up information. We therefore fail to find a meaningful distinction between
Buchheit’s and Freelander’s collective teachings and the claimed invention.
Appeal 2009-007694
Application 10/870,269

14
For the foregoing reasons, Appellant has not shown error in the
obviousness rejection of claim 16. We therefore sustain the rejection of
claim 16, and claims 26, 37, 44, and 73 which fall with claim 16.

CONCLUSION
The Examiner did not err in rejecting (1) claims 1-3, 5-7, 9-13, 15, 17-
19, 21-23, 25, 27-30, 32-34, 36, 38-42, 45-48, and 50-71 under § 102, and
(2) claims 4, 8, 14, 16, 20, 24, 26, 31, 35, 37, 43, 44, 49, 72, and 73 under §
103.

ORDER
The Examiner’s decision rejecting claims 1-73 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

pgc

WONG, CABELLO, LUTSCH,
RUTHERFORD & BRUCCULERI LLP
20333 Tomball Parkway
SUITE 600
HOUSTON, TX 77070