Ex Parte Chavoustie et al

Patent Trial and Appeal Board

Jul 29, 2013

10960254 (P.T.A.B. Jul. 29, 2013)

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.
10/960,254 10/07/2004 Michael D. Chavoustie RSW920040160US1 7752
75949 7590 07/29/2013
IBM CORPORATION
C/O: VanCott Bagley, Cornwall & McCarthy
36 South State Street
Suite 1900
Salt Lake City, UT 84111
EXAMINER
PATEL, MANGLESH M
ART UNIT PAPER NUMBER
2178
MAIL DATE DELIVERY MODE
07/29/2013 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 MICHAEL D. CHAVOUSTIE, ANDREW M. EBERBACH,
TREVOR L. MONTGOMERY, and JOSHUA M. WOODS
____________

Appeal 2011-001886
Application 10/960,254
Technology Center 2100
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1, 2, 5, 7, 10-16, 17, 18, 30, 33, 35, 38-43, 45, 47, 48,
50, 53-59, 64-67, 76, and 78-83. We have jurisdiction under 35 U.S.C. §
6(b).
We reverse and enter new grounds of rejection.
STATEMENT OF THE CASE
The present invention is software for simplifying a spreadsheet,
particularly in instances of a cell formula referencing other cell formulas.
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Specification, Abstract. In the example of Appellants’ Figure 5 spreadsheet,
reproduced below with annotations, a user’s understanding of a selected cell
is improved by full expansion of the included formula “A1*10” – i.e., by
entering directly and indirectly referenced cell formulas – and simplification
of the inserted terms as follows: A1*10 = (B2+B4)*10 = 10*(B2) +
10*(A7+10) = 10*(B2) + 10*(A7) + 100 = (B2+A7+10)*10. Spec., ¶ 51.

Appellants’ annotated Figure 5, reproduced above, illustrates a
spreadsheet that can be simplified in accord with an
embodiment of the present invention.
Appellants describe the selected formula as that of a “root” cell and
the referenced formulas as that of “intermediary” cells. Id. Because only
the B2 and A7 cell values are input to the consolidated root cell formula
“(B2+A7+10)*10” (shown as “formula1(B2, A7)” by Appellants’ Figure 9),
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the intermediary cell contents may be deleted to further simplify the
spreadsheet. Id. at ¶ 54. If an intermediary cell is referenced by another cell
(e.g., cell B4 is referenced by cell D2), the invention highlights the
referenced intermediary cell and/or referencing cell to warn the user that the
noted deletion may cause a reference error. Id.
Independent claim 1 is illustrative, with a key disputed limitation
emphasized:
1. A method for processing cells in a spreadsheet, the
method comprising:
displaying a spreadsheet, said spreadsheet including a plurality
of cells, some of said cells containing data and some of said
cells containing formulas;
in response to user selection of a root cell of said spreadsheet,
said root cell containing a root formula, displaying said root
formula in said root cell;
determining a dependency chain for said root cell, said
dependency chain including at least one input cell and at least
one intermediate cell between said input cell and said root cell,
said at least one intermediate cell containing an intermediate
formula;
automatically consolidating said intermediate formula and said
root formula to provide a consolidated formula; and
storing the consolidated formula in a single cell.
The Examiner relies on the following reference as evidence of
unpatentability:
Killen US 2004/0088650 A1 May 6, 2004
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REJECTIONS
The Examiner rejected claims 1, 2, 5, 7, 10-16, 17, 18, 30, 33, 35, 38-
43, 45, 47, 48, 50, 53-59, 64-67, 76, and 78-83 under 35 U.S.C. § 102 as
anticipated by Killen. Ans., pp. 4.1
The Examiner objected to claims 4, 16, 32, 44, and 77 as dependent
upon a rejected base claim but would be allowable if rewritten in
independent form. Id. at p. 3.
In light of the Appeal Brief arguments, the Examiner withdrew a
rejection of claims 45, 47, 48, 50, and 53-59 under 35 U.S.C. § 101. Id.

ANALYSIS
Claims 1, 17, 18, and 76 are the only independent claims. Each
requires a step or structure that automatically consolidates an intermediate
cell formula and root cell formula. The Examiner and Appellants dispute the
claimed meaning of “consolidate.” The Examiner states:
Consolidate is interpreted as combining the Formulas from
other cells by referencing the respective cells which contain a
formula and then placing the formula cells together, thereby
consolidating in a single cell.
Ans., p. 19. Presenting Specification and general usages of “consolidate,”
Appellants respond:

1 Throughout this opinion, we refer to the Appeal Brief filed April 13, 2009
(“App. Br.”), Examiner’s Answer mailed June 25, 2010 (“Ans.”), and Reply
Brief mailed August 23, 2010 (“Reply Br.”).
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A common thread in each of these definitions [of “consolidate”]
is the idea of combining separate entities into a single entity.
Appellant’s specification uses the term “consolidate” in a way
that is consistent with this understanding of a combination of
intermediate cells into a single root cell that exhibits all of the
functionality of the intermediate cells. (See, e.g., Appellants’
Specification, paras. 0043, 0047-52, Figs. 5-13).
Reply Br., p. 8.
We agree with the Examiner insofar, but only insofar, as the term
“consolidate” ordinarily encompasses any process of uniting elements. See
e.g., Random House Webster’s Unabridged Dictionary 434 (2d ed. 2001)
(defining “consolidate” as “to bring together (separate parts) into a single or
unified whole; unite; combine”). However, “claims in an application are to
be given their broadest reasonable interpretation consistent with the
specification[.]” In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983)
(emphasis added). As reflected by Appellants’ argument, the Specification’s
usage of “consolidate” unequivocally shows that Appellants’ intended
meaning does not encompass mere incorporating of the formulas by
reference, but rather requires uniting and simplifying of the formulas
themselves. See e.g., Spec., ¶ 51 (differentiating between “referenced” and
“consolidated”). We accordingly interpret the claimed “consolidating” as a
step of uniting and simplifying the consolidated formulas’ contents within
the incorporating cell (claimed “single cell”).
The Examiner cites cell “E5” of Killen’s Figure 5 spreadsheet as
teaching the claimed consolidating. Ans., pp. 4-5. The cited cell merely
incorporates formulas by reference to cells “E3” and “E4.” The cited cell
does not unite and simplify the formulas’ contents, as required by claim 1.
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Accordingly, the anticipation rejection of claims 1, 2, 5, 7, 10-16, 17,
18, 30, 33, 35, 38-43, 45, 47, 48, 50, 53-59, 64-67, 76, and 78-83 over Killen
is not sustained.
NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1, 7, and 13 under 35 U.S.C. § 103 as obvious over Killen and Appellants’
background art.2
Claim 1
For the reasons presented within the rejection of claim 1, we find (and
Appellants do not dispute) that Killen teaches all but the claimed
consolidating. In light of Appellants’ background discussion of the
invention (Spec., ¶ 2), we further find that the claimed consolidating
constitutes an obvious improvement of Killen’s teachings (and spreadsheets
generally).
Killen’s Figure 5 spreadsheet has cells that singularly incorporate
multiple formulas by reference, e.g., cited cell “E5” incorporates two

2 Aside from claim 18 being addressed with respect to the withdrawn
rejection under 35 U.S.C. § 101 (see App. Br., pp. 11-12; supra, p. 4),
claims 1, 7, and 13 are the only claims addressed by Appellants without
principally referencing other arguments (App. Br., pp. 13-19). For this
reason alone, we reject claims 1, 7, and 13 under the new grounds. We
make no assessment of whether the remaining claims patentably distinguish
over Killen and Appellants’ background art, but rather leave the Examiner to
consider that matter in light of our findings. Cf., Manual of Patent
Examining Procedure § 1213.02 (“Since the exercise of authority under 37
CFR 41.50(b) is discretionary, no inference should be drawn from a failure
to exercise that discretion.”).
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summations by reference to cells “E3” and “E4.” Though the spreadsheet’s
particular formulas do not lend themselves to consolidation, Appellants’
background discussion of the invention evidences skilled artisans would
have understood that incorporated spreadsheet formulas (i.e., incorporated
within a single cell by reference) sometimes “interrelate” and “contain
interdependencies” (Spec., ¶2). The issue, therefore, is whether skilled
artisans would have further understood a benefit and process of
consolidating such incorporated, interdependent spreadsheet formulas.
The benefits of consolidating interdependent formulas – e.g., easier
computation and comprehension – have been generally understood since
long before Appellants’ invention. And, the processes of consolidating
interdependent formulas – e.g., substitution and cancellation of terms – have
been likewise understood. Given these understandings, it would have been
obvious to ease the user’s comprehension of Killen’s spreadsheet (or any
other spreadsheet) by consolidating incorporated, interdependent cell
formulas. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.”).
Claim 7
Claim 7 depends from claim 1 and recites: “highlighting cells in said
dependency chain for said root cell responsive to the user input selecting the
root cell.” Appellants argue that this feature is inadequately addressed by
the Examiner. Reply Br., pp. 10-11. We agree. However, it is common
sense to highlight the intermediary cells referenced by a selected cell,
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particularly so as to ease the user’s identification of the selected cell’s
incorporated contents. See KSR, 550 U.S. at 421 (“Rigid preventative rules
that deny factfinders recourse to common sense, however, are neither
necessary under our case law nor consistent with it.”).
Claim 14
Claim 14 depends from claim 1 and recites: “if the intermediate cell is
referenced by a cell other than the root cell, generating an alert to a user.”
Appellants argue that “even a cursory reading of [Killen’s cited paragraphs
54-55] reveals [this feature] is not taught or suggested by Killen[.]” Reply
Br., p. 12. We agree. However, it is common sense to delete unreferenced
intermediary cells after consolidation of the root cell, particularly because
they are no longer needed. See supra, p. 2 (discussing the invention’s
deletion of unreferenced intermediary cells). Similarly, it is common sense
to alert the user of referenced intermediary cells after consolidation of the
root cell, particularly because they are still needed and thus their deletion
should be prevented.
ORDER
The Examiner’s decision rejecting claims 1, 2, 5, 7, 10-16, 17, 18, 30,
33, 35, 38-43, 45, 47, 48, 50, 53-59, 64-67, 76, and 78-83 is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejection under 35 U.S.C. § 103 against claims 1, 7, and 14.
Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
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one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED; 37 C.F.R. § 41.50(B)

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