Yaniv Gur et al.Download PDFPatent Trials and Appeals BoardAug 8, 201911890784 - (D) (P.T.A.B. Aug. 8, 2019) Copy Citation 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. Appeal 2018-007282 Application 11/890,784 2 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. Appeal 2018-007282 Application 11/890,784 3 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 Appeal 2018-007282 Application 11/890,784 4 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. Appeal 2018-007282 Application 11/890,784 5 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, Appeal 2018-007282 Application 11/890,784 6 “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 Appeal 2018-007282 Application 11/890,784 7 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); Appeal 2018-007282 Application 11/890,784 8 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 Copy with citationCopy as parenthetical citation