Ex Parte Clee et alDownload PDFPatent Trial and Appeal BoardDec 20, 201613313515 (P.T.A.B. Dec. 20, 2016) 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. 13/313,515 12/07/2011 Scott J. Clee GB920100054US1 4067 75532 7590 LEE LAW, PLLC IBM SVL IP P.O. BOX 189 PITTSBORO, NC 27312 12/22/2016 EXAMINER VELEZ-LOPEZ, MARIO M ART UNIT PAPER NUMBER 2144 NOTIFICATION DATE DELIVERY MODE 12/22/2016 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): docketing @ leelawpllc .com docketing_archive @ leelawpllc .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT J. CLEE, KATHERINE M. SHANN, DANIEL E. WOULD, and SHANNA XU Appeal 2015-008059 Application 13/313,515 Technology Center 2100 Before JOHNNY A. KUMAR, NORMAN H. BEAMER, and JOYCE CRAIG, Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 7—24.1 Claims 1—6 are cancelled. We have jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b). This Appeal is related to Appeal 2015-004898. (App. Br. 4; see 9/26/2016 Decision, Appeal No. 2015-004898.) We reverse, and also institute a NEW GROUND OF REJECTION within the provisions of 37 C.F.R. § 41.50(b) (2012). 1 Appellants identify International Business Machines Corporation as the real party in interest. (App. Br. 3.) Appeal 2015-008059 Application 13/313,515 THE INVENTION Appellants’ disclosed and claimed invention is directed to editing fragmented documents. (Abstract.) Claim 7, reproduced below, is illustrative of the claimed subject matter: 7. A system for editing a fragmented document, comprising: a user interface arranged to: receive a user command selecting a whole or part of a discrete document of the fragmented document, where the fragmented document comprises a plurality of discrete documents connected by a plurality of links, each link being located within content of one discrete document and connecting to another different discrete document, where the plurality of links allow processor navigation back and forth between discrete documents of the plurality of discrete documents during processor editing operations on the plurality of discrete documents; and receive an edit command to edit the selected whole or part of the discrete document; and a processor programmed to: access, using the plurality of links that connect the plurality of discrete documents in response to receiving the edit command, each other discrete document connected to the selected whole or part of the discrete document; and edit the accessed other discrete documents according to the edit command. REJECTIONS The Examiner rejected claims 7—10 and 13—16 under 35 U.S.C. § 102(b) as being anticipated by Koinuma (US 2006/0123337 Al, pub. June 8, 2006). (Final Act. 2-A.) 2 Appeal 2015-008059 Application 13/313,515 The Examiner rejected claims 11 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Koinuma and Leetaru et al. (US 2005/0240869 Al, pub. Oct. 27, 2005). (Final Act. 5—6.) The Examiner rejected claims 12 and 18 under 35 U.S.C. § 103(a) as being unpatentable over Koinuma and “Basic Emacs Editor Commands,” http://www.cs.colostate.edu/heldocs/emacs.html (April 17, 2009). (Final Act. 6-7.) The Examiner rejected claims 19 and 22 under 35 U.S.C. § 103(a) as being unpatentable over Koinuma and Angiulo et al (US 6,044,387, issued Mar. 28, 2000). (Final Act. 7-8.) The Examiner rejected claims 20 and 23 under 35 U.S.C. § 103(a) as being unpatentable over Koinuma and “Yahoo Developer Network” (Aug 6, 2007). (Final Act. 8-9.) The Examiner rejected claims 21 and 24 under 35 U.S.C. § 103(a) as being unpatentable over Koinuma and Dozier et al. (US 5,870,552, issued Feb. 9, 1999). (Final Act. 9-10.) ISSUE ON APPEAL Appellants’ arguments in the Appeal Brief present the following dispositive issue:2 Whether, under Section 102, the Examiner erred in finding Koinuma discloses the independent claim 7 limitations, “access, using the plurality of 2 Rather than reiterate the arguments of Appellants and the findings of the Examiner, we refer to the Appeal Brief (filed Apr. 29, 2015); the Reply Brief (filed Sept. 6, 2015); the Final Office Action (mailed Dec. 4, 2014); and the Examiner’s Answer (mailed July 6, 2015) for the respective details. 3 Appeal 2015-008059 Application 13/313,515 links that connect the plurality of discrete documents in response to receiving the edit command, each other discrete document connected to the selected whole or part of the discrete document; and edit the accessed other discrete documents according to the edit command,” and the similar limitations recited in independent claim 13. (App. Br. 33—40.) ANALYSIS As we found in our previous Decision (incorporated by reference herein) with respect to similar claim limitations at issue in the related Appeal, we are persuaded by Appellants’ arguments that the Examiner errs in finding the above-referenced limitations disclosed in Koinuma. (See 9/26/2016 Decision, Appeal No. 2015-004898.) The Examiner relies on the disclosure in Koinuma of the ability to edit any portion of the composed document on the design screen. (Final Act. 3; Ans. 3—5, 12—13; Koinuma Figs. 6, 11, 12, || 79-82, 104.) However, this aspect of Koinuma discloses only editing a given discrete document, and accordingly refers to a different limitation of the independent claims: “receive an edit command to edit the selected whole or part of the discrete document.” The Examiner does not point to any disclosure in Koinuma, nor do we find any such disclosure, of accessing other discrete documents connected to the edited discrete document as also required by the claims. (App. Br. 33—40.) Therefore, on the record before us, we are constrained to find the Examiner errs in rejecting independent claims 7 and 13 under Section 102. 4 Appeal 2015-008059 Application 13/313,515 CONCLUSIONS REGARDING THE EXAMINER’S REJECTIONS For the reasons stated above, we do not sustain the anticipation rejection of independent claims 7 and 13. We also do not sustain the anticipation rejection of claims 8—10 and 14—16 over Koinuma, and the obviousness rejections of claims 11 and 17 over Koinuma and Leetaru, of claims 12 and 18 over Koinuma and “Basic Emacs Editor Commands,” of claims 19 and 22 over Koinuma and Angiulo, of claims 20 and 23 over Koinuma and “Yahoo Developer Network,” and of claims 21 and 24 over Koinuma and Dozier, which claims depend from claims 7 or 13. NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b) Claims 13—18 and 22—24 are rejected under 35 U.S.C. § 101 as directed to nonstatutory subject matter. Independent claim 13 is directed to a “computer program product on a computer readable storage medium . . . comprising computer readable program code instructions. . . .” Such is broad enough to cover signals per se. See Subject Matter Eligibility of Computer-Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) states: The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non- transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. A claim may be amended to overcome a § 101 rejection by adding the limitation “non—transitory” to the claim. Id. See also Ex parte Mewherter, 107 USPQ2d 1857, No. 2012-007692 (BPAI May 8, 2013) (precedential-in part) (adding “storage” before the word “medium” in “computer readable 5 Appeal 2015-008059 Application 13/313,515 medium” does not overcome the § 101 rejection). Dependent claims 14—18 and 22—24 are rejected as directed to nonstatutory subject matter for the same reason. DECISION We reverse the Examiner’s rejections of claims 7—24. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). This decision contains a new ground of rejection of claims 13—18 and 22—24 pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground 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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been 6 Appeal 2015-008059 Application 13/313,515 misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED 37 C.F.R. §41.500?) 7 Copy with citationCopy as parenthetical citation