Ex Parte Maison

Patent Trial and Appeal Board

Jul 20, 2017

13936160 (P.T.A.B. Jul. 20, 2017)

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.
13/936,160 07/06/2013 Mickael Maison GB920120027US1 3544
77351 7590
IBM CORP. (AUS)
C/O THE LAW OFFICE OF JAMES BAUDINO, PLLC
2313 ROOSEVELT DRIVE
SUITE A
ARLINGTON, TX 76016
EXAMINER
AMINI, JAVID A
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
07/20/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MICKAEL MAISON
(Applicant: INTERNATIONAL BUSINESS MACHINES CORP.)
Appeal 2017-001860
Application 13/936,160
Technology Center 2600
Before BRUCE R. WINSOR, IRVIN E. BRANCH, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—20, which are all pending claims. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
Appeal 2017-001860
Application 13/936,160
Introduction and Illustrative Claim
Appellant’s Specification, titled “Shortening a Name for Display,”
identifies by way of background that, with modem operating systems,
“[w]hen there is not enough space on the screen to display the full file name,
the name is cropped. When file names start with the same letters, the user
does not have a way to identify a unique file as several files may appear to
have the same name.” Spec. 11. Appellant provides a method to shorten
names for display, which includes “replacing one or more words in the name
string with an acronym.” Id. ^ 2.
Claim 1 is illustrative of the independent claims:
1. A method for shortening a name for display,
comprising:
determining a size of a computing device display area in
which the name is to be displayed; and
receiving a name string for display and shortening the
name string to fit into the display area; and
wherein shortening the name string includes:
replacing one or more words in the name string
with an acronym; and
removing or replacing one or more non-distinctive
elements in the name string.
App. Br. 13 (Claims App’x) (argued requirement in italics).
Rejections and References
Claims 1^4 stand rejected under pre-AIA 35 U.S.C. § 102(b) as
anticipated by Ahn et al. (US 2008/0126432 Al; May 29, 2008). Final Act.
3-5.
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Application 13/936,160
Claim 5 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Aim and Urushi (US 2004/0158547 Al; Aug. 12, 2004).
Final Act. 6.
Claims 6—20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Aim and Reynolds et al. (US 6,286,013 Bl; Sept. 4,
2001). Final Act. 6—9.
ISSUES
Based on Appellant’s arguments, the issues before us are whether the
Examiner errs in (1) the § 102 anticipation rejection of claim 1 and (2) the
§ 103 obviousness rejection of claim 10. App. Br. 4—11.
ANALYSIS
Claim 1
In rejecting claim 1, the Examiner finds the example shown in Ahn’s
Figure 5, which uses the method shown in Ahn’s Figure 6, discloses the
argued requirement of “replacing one or more words in the name string with
an acronym.” Final Act. 4 (citing Ahn H 11, 30, Figs. 5—6). Appellant
argues the Examiner errs in finding Ahn discloses the requirement because
“[ajlthough Ahn appears to disclose that certain words may be deleted based
on the deletion word list, none of those words appear to be ‘replaced’ with
an acronym.” App. Br. 5. Appellant does not persuade us the Examiner
errs.
Appellant contends that “the Examiner appears to ignore the explicit
requirement that certain words be ‘replaced’ with an acronym.” App. Br. 6
(emphasis added). We find this contention unpersuasive, because it is not
commensurate with the scope of the argued requirement. Under the plain
meaning of “replacing one or more words in the name string with an
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Appeal 2017-001860
Application 13/936,160
acronym,” in view of Appellant’s Specification, replacing any word in an
original filename with an acronym to create a shortened filename falls within
the scope of the argued requirement.
Ahn teaches a method for shortening a filename that separates the
filename into words and then, to shorten the filename, deletes some of the
words. See Ahn Abstract, H 11, 23 40, Figs. 1, 5—6. Ahn’s Figure 5
illustrates using this method to shorten “Marrying.The.Mafia.2.2005.
DVDRip.XVID.AC3.5.1CH.CD 1.CaYEnne .avi” into “Marrying.The.Mafia.
2.CDl.avi” (identifying words within the filename as those portions of the
filename delimited by a period, dash, and/or blank space (142)). In the
example of Ahn’s Figure 5, the shortened filename retains the first four
words from the original filename but replaces the fifth word (originally
“2005”) with the “CD1” acronym. Under the plain meaning of the argued
requirement, this constitutes “replacing one or more words in the name
string with an acronym,” as recited.
We note Appellant’s Specification describes a method for shortening
a name for display that differs from the method disclosed by Ahn. While we
certainly interpret the claims in light of the Specification, Phillips v. A WH
Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (enbanc), “[i]t is a bedrock
principle of patent law that the claims of a patent define the invention to
which the patentee is entitled the right to exclude,” id. at 1312. See also In
re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“[T]his court counsels the
PTO to avoid the temptation to limit broad claim terms solely on the basis of
specification passages.”).
Accordingly, we sustain the Examiner’s rejection of claim 1.
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Appeal 2017-001860
Application 13/936,160
Claim 10
Independent claim 10 recites a system that requires, inter alia, “an
acronym component for replacing one or more words in the name string with
an acronym.” App. Br. 14—15 (Claims App’x). In rejecting claim 10 as
obvious under 35 U.S.C. § 103(a), the Examiner finds Ahn teaches this
requirement for the same reason as for claim 1. Final Act. 8. Appellant
argues the Examiner errs in this finding for the same reasons as for claim 1.
App. Br. 8—10. For the same reasons discussed above, Appellant does not
persuade us of Examiner error, and we sustain the rejection of claim 10.
Claims 2—9 and 11—20
Appellant presents no substantive argument for claims 2—9 and 11—20
separate from the arguments presented for claims 1 and 10, see App. Br. 11,
and, therefore, we also sustain their rejection. 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the above reasons, we affirm the rejection of claims 1—20. No
time period for taking any subsequent action in connection with this appeal
maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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