Yaniv Gur et al.

Patent Trials and Appeals Board

Aug 8, 2019

11890784 - (D) (P.T.A.B. Aug. 8, 2019)

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.
11/890,784 08/06/2007 Yaniv Gur P4779US1/ APPL:0414 8555
73576 7590 08/08/2019
APPLE INC. - Fletcher
c/o Fletcher Yoder, PC
P.O. Box 692289
Houston, TX 77269-2289
EXAMINER
HILLERY, NATHAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/08/2019 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):
docket@fyiplaw.com
hill@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YANIV GUR, PETER WILLIAM RAPP, and
CHRISTOPHER DOUGLAS WEELDREYER
____________________

Appeal 2018-007282
Application 11/890,784
Technology Center 3700
____________________

Before MICHAEL J. FITZPATRICK, MICHELLE R. OSINSKI, and
LISA M. GUIJT, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Yaniv Gur et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1, 3–7, 10, 11, 13–18, 20–22, and
27–29.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants identify the real party in interest as Apple, Inc. Appeal Br. 2.
2 Claims 2, 8, 9, 12, 19, and 23–26 are cancelled. Resp. to Office Act.
(Nov. 11, 2016), 2–6.
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Application 11/890,784

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THE CLAIMED SUBJECT MATTER
Claims 1, 14, and 18 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
1. A method for automatically inserting a default function into a
host cell, comprising:
receiving, with processing circuitry configured to execute
instructions stored on a memory, an input for the host cell that
triggers a formula editing mode in the host cell;
receiving, with the processing circuitry, while in the
formula editing mode in the host cell, an argument of the default
function before the default function has been inserted into the
host cell, wherein the argument comprises a selection or a
specification of a set of a plurality of cells; and
in response to receiving the argument:
automatically inserting, via the processing circuitry,
the default function into the host cell, without a user
indication of a function to insert into the host cell, using
the set of the plurality of selected or specified cells as the
argument of the default function.

THE REJECTIONS3
I. Claims 1, 3–7, 10, 11, 13–18, 20–22, and 27–29 stand rejected
under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement. Final Act. 2–3.
II. Claims 1, 3–7, 10, 11, 13–18, 20–22, and 27–29 stand rejected
under 35 U.S.C. § 112, second paragraph, as being indefinite. Id.
at 3–4.

3 The rejection of claims 1, 3–7, 10, 11, 13–18, 20–22, and 27–29 under
35 U.S.C. § 103(a) as unpatentable over Barrett (US 2006/0224946 A1; pub.
Oct. 5, 2006) and Detwiler (Richard Detwiler et al., MIGRATION GUIDE:
CHAPTER 6 DIFFERENCES IN USE BETWEEN CALC AND EXCEL (May 7, 2006)
(Based on OpenOffice.org 2.0.2)) (Final Act. 4–10) has been withdrawn
(Ans. 2) and is not before us on appeal.
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Application 11/890,784

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OPINION
Rejection I
The fundamental factual inquiry for ascertaining compliance with the
written description requirement is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date. See Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). “This inquiry . . . is a question of fact,” and “the level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.” Id. “[T]he specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.” Id.
The Examiner finds that the disclosure of the present application fails
to provide adequate written description support for the “claim limitation
[reciting]: ‘automatically inserting the default function into the host cell
without a user indication of a function to insert into the host cell.’” Final
Act. 3. In response to Appellants’ arguments (Appeal Br. 5–6 (citing Spec.
¶ 13)), the Examiner clarifies that “[t]he Office agrees with Appellants that
there is support for automatically inserting the default function into the host
cell, without a user manually entering such a function into the host cell;
however, the Office, even in light of Appellants[’] arguments, continues
failing to see any support for automatically inserting the default function into
the host cell, without a user indication of a function to insert into the host
cell as claimed.” Ans. 3. According to the Examiner, “[t]he claim describes
the case when the user selects and/or specifies one or more cells when in a
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formula editing mode and therefore is an example of automatically inserting
the function in response to an indication.” Id. at 3–4.
Appellants argue that “the action of merely selecting cells is
inconsistent with the ordinary and customary meaning of a user indication of
a function to insert into the host cell.” Reply Br. 3. Appellants also argue
that “the [S]pecification expressly specifies that selecting cells is not a user
indication of a function.” Id. at 4. Finally, Appellants argue that “one
skilled in the art would understand that ‘a user indication of a function to
insert into the host cell’ might include typing the function into the host cell,
selecting a button that corresponds to the function, etc.” Id.
We are not persuaded by Appellants’ arguments because the
Specification explicitly states that “if the user selects and/or specifies one or
more cells when in a formula editing mode,” this is an example of “an
indication that the function may be desired.” Spec. ¶ 15. Thus, Appellants’
disclosure of “entering a formula editing mode . . . by entering an equals
sign” coupled with the selection of one or more cells (id. ¶ 13) describes a
user indication of a function to insert into a host cell. In other words, the
combination of triggering a formula editing mode and selecting one or more
cells when in that triggered formula editing mode, is itself a user indication
that a function is desired. Appellants’ argument that this combination does
not provide an indication as to which particular function is desirable is not
commensurate with the scope of the claim.
Thus, Appellants fail to show that the Specification provides a written
description of automatically inserting a default function into a host cell
without a user indication of a function to insert into the host cell. See id.
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Accordingly, we sustain the rejection of claims 1, 3–7, 10, 11,
13–18, 20–22, and 27–29 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Rejection II
First Basis
Independent claim 1 recites, in relevant part, the step of “in response
to receiving the argument: automatically inserting . . . the default function
into the host cell, without a user indication of a function to insert into the
host cell.” Appeal Br. Claims App’x 2. The Examiner determines “it is
unclear how the default function is automatically inserted into the host cell
without a user indication of a function to insert into the host cell.” Final
Act. 3. In particular, the Examiner indicates that “the first step recites
receiving an input for the host cell that triggers a formula editing mode in
the host cell” and “[t]riggering a formula editing mode is, by definition, a
user indication of a function to insert into the host cell.” Ans. 5. The
Examiner points out that paragraph 15 of the Specification states that “it is
useful to automatically insert the function in response to an indication that
the function may desired (e.g., if the user selects and/or specifies one more
cells when in a formula editing mode).” Spec. ¶ 15 (cited at Ans. 5). The
Examiner continues that “common sense dictates that when a user triggers
the formula editing mode that the user is clearly indicating some function is
to be inserted.” Ans. 6.
Appellants respond that “[t]riggering a formula editing mode (e.g., ‘by
entering an equals sign ‘=’ into the host cell’) merely enables a formula to be
entered, but is not a user indication of the formula to insert into the host
cell.” Reply Br. 6 (citing Spec. ¶ 13). That is, according to Appellants,
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“triggering the formula editing mode gives no indication of the function to
insert into the host cell.” Id. Appellants continue that “the [S]pecification
expressly discloses an embodiment of entering a formula editing mode in a
host cell and then automatically inserting a ‘SUM’ function in the host cell,
which ‘saves the user from having to manually enter the function in the host
cell.’” Id. at 7 (quoting Spec. ¶ 13). Appellants maintain that, thus, “the
[S]pecification expressly specifies that . . . entering a formula editing mode
is not a user indication of a function.” Id.
As described above in the analysis of the written description rejection,
we agree with the Examiner that the combination of triggering the formula
editing mode and selecting one or more cells when in that formula editing
mode is itself an indication that a function is desired. Thus, the claim is
internally inconsistent because it first recites the steps of “receiving . . . an
input . . . that triggers a formula editing mode” and “receiving, . . . while in
the formula editing mode . . . , a selection or a specification of a set of a
plurality of cells” (which, at least collectively, constitute a user indication of
a function to insert into the host cell) and then subsequently recites
“automatically inserting . . . the default function into the host cell, without a
user indication of a function to insert into the host cell.”
Again, we acknowledge Appellants’ arguments that triggering the
formula editing mode and selecting one or more cells when in that mode
does not indicate the particular formula to be inserted into a host cell (see
Reply Br. 6), but we do not find such arguments persuasive when the claim
recites “without a user indication of a function to insert into the host cell,”
rather than more precisely specifying that automatic insertion of the default
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function occurs in response to receiving the argument without a user
indication of the particular function to be inserted into the host cell.
The internal inconsistency of the claim alone renders claim 1
indefinite under 35 U.S.C. § 112, second paragraph, for failing to
particularly point out and distinctly claim that which the inventor regards as
the invention. The Examiner rejects claims 3–7, 10, 11, 13–18, 20–22, and
27–29 “for either fully incorporating all the deficiencies of the base claim(s)
from which they depend or being substantially similar to claim 1.” Final
Act. 4. Accordingly, we sustain the Examiner’s first basis for rejecting
claims 1, 3–7, 10, 11, 13–18, 20–22, and 27–29 under 35 U.S.C. § 112,
second paragraph, as indefinite.
Second Basis
Dependent claim 27 recites “wherein the default function may be
specified from a plurality of functions.” Appeal Br. Claims App’x 5. The
Examiner indicates that “[r]egarding claim 27, the phrase ‘may be’ renders
the claim indefinite because it is unclear whether the limitation(s) following
the phrase are part of the claimed invention.” Final Act. 3.
Appellants do not present any substantive arguments contesting the
Examiner’s second basis of rejection of claim 27 under 35 U.S.C. § 112,
second paragraph, as being indefinite. See Appeal Br. 6–8 (presenting
arguments only as to the first basis). Consequently, Appellants have waived
any argument of error, and we summarily sustain the rejection of claim 27
under 35 U.S.C. § 112, second paragraph, as being indefinite. See, e.g., In
re Berger, 279 F.3d 975, 984–85 (Fed. Cir. 2002) (holding that the Board
did not err in sustaining a rejection under 35 U.S.C. § 112, second
paragraph, when the applicant failed to contest the rejection on appeal);
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Application 11/890,784

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Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that
summary affirmance without consideration of the substantive merits is
appropriate where an appellant fails to contest a ground of rejection).

DECISION
The Examiner’s decision to reject claims 1, 3–7, 10, 11, 13–18, 20–
22, and 27–29 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement is affirmed.
The Examiner’s decision to reject claims 1, 3–7, 10, 11, 13–18, 20–
22, and 27–29 under 35 U.S.C. § 112, second paragraph, as being indefinite
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED