Ex Parte Clee et al

Patent Trial and Appeal Board

Sep 22, 2016

13434610 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/434,610 03/29/2012
75532 7590 09/26/2016
LEE LAW, PLLC
IBM SVLIP
P.O. BOX 189
PITTSBORO, NC 27312
FIRST NAMED INVENTOR
Scott J. Clee
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GB920100054US2 8592
EXAMINER
VELEZ-LOPEZ, MARIO M
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
09/26/2016 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
Exparte SCOTT J. CLEE, KATHERINE M. SHANN,
DANIELE. WOULD, and SHANNA XU
Appeal2015-004898
Application 13/434,610
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) the Examiner's Final
Rejection of claims 1-9. 1 We have jurisdiction over the pending rejected
claims under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify International Business Machines Corporation as the
real party in interest. (App. Br. 3.)
Appeal2015-004898
Application 13/434,610
THE INVENTION
Appellants' disclosed and claimed invention is directed to editing
fragmented documents. (Abstract.) Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of editing a fragmented document, comprising:
receiving, at a computing device, 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 one discrete
document and connecting to another different discrete
document;
receiving an edit command to edit the selected whole or
part of the discrete document;
accessing each other discrete document connected to the
selected whole or part of the discrete document by a link within
the selected whole or part of the discrete document; and
editing the accessed discrete documents according to the
edit command.
REJECTIONS
The Examiner rejected claims 1--4 under 35 U.S.C. § 102(b) as being
anticipated by Koinuma (US 2006/0123337 Al, pub. Jun. 8, 2006). (Final
Act. 2-3.)
The Examiner rejected claim 5 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. 4--5.)
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Koinuma and "Basic Emacs Editor Commands,"
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Appeal2015-004898
Application 13/434,610
httQ://www.cs.colostate.edu/helQdocs/emacs.html (April 17, 2009). (Final
Act. 5-6.)
The Examiner rejected claim 7 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. 6-7.)
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Koinuma and "Yahoo Developer Network" (Aug 6,
2007). (Final Act. 7-8.)
The Examiner rejected claim 9 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. 8-9.)
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 limitations of independent claim 1. (App. Br. 4--9 .)
ANALYSIS
Appellants argue the Examiner erred in finding Koinuma discloses
the requirement of the third limitation of claim 1, "accessing each other
discrete document connected to the selected whole or part of the discrete
2 Rather than reiterate the arguments of Appellants and the findings of the
Examiner, we refer to the Appeal Brief (filed Oct. 10, 2014); the Reply Brief
(filed Mar. 30, 2015); the Final Office Action (mailed May. 8, 2014); and
the Examiner's Answer (mailed Jan. 30, 2015) for the respective details.
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Appeal2015-004898
Application 13/434,610
document by a link within the selected whole or part of the discrete
document." (E.g., App. Br. 28-35.) We are persuaded the Examiner errs in
finding this limitation disclosed in Koinuma. As Appellants point out, the
Examiner does not address this limitation in the Final Action. (App. Br. 28-
29; see Final Act. 3.) In the Answer, the Examiner relies on the disclosure
in Koinuma of the ability to edit any portion of the composed document on
the design screen. (Ans. 4, 14--15; Koinuma i-fi-179-82, 104.) However, this
aspect of Koinuma refers to the claimed editing of "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 claim. (App. Br. 30-31.)
Therefore, on the record before us, we are constrained to find the
Examiner errs in rejecting independent claim 1 under Section 102. 3
3 Appellants also argue the Examiner errs in finding Koinuma discloses the
requirement in the first claim 1 limitation of editing a "fragmented"
document comprised of "a plurality of discrete documents connected by a
plurality of links." (E.g., App. Br. 20-27.) In particular, Appellants argue
Koinuma discloses editing documents that are "combined, consolidated, and
composed," rather than "fragmented." (App. Br. 23.) Appellants further
argue the documents disclosed in Koinuma do not consist of discrete
documents connected by "links," but rather the document is made up of
contents physically embedded in the document via "Include" commands.
(App. Br. 24.)
These arguments directed to the first limitation of claim 1 are not
persuasive. Appellants' argument concerning "composed" documents refers
to the image of a "composed" document on the disclosed "design" screen
(see Koinuma Fig. 11 ), but the actual document is made up of a plurality of
separate parent and child source documents linked together (see Koinuma
Figs. 9, 10), and thus is indeed fragmented in the sense of the claim. (Final
Act. 2; Ans. 3; Koinuma i-fi-151-53; 70, 73-75.) In addition, Appellants'
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Application 13/434,610
CONCLUSIONS
For the reasons stated above, we do not sustain the anticipation
rejection of independent claim 1. We also do not sustain the anticipation
rejection of claims 2--4 over Koinuma, and the obviousness rejections of
claim 5 over Koinuma and Leetaru, of claim 6 over Koinuma and "Basic
Emacs Editor Commands," of claim 7 over Koinuma and Angiulo, of claim
8 over Koinuma and "Yahoo Developer Network," and of claim 9 over
Koinuma and Dozier, which claims depend from claim 1.
DECISION
We reverse the Examiner's rejections of claims 1-9.
REVERSED
argument distinguishing the embedded documents of Koinuma from the
claim requirement of linked documents is without merit. (Final Act. 2-3.)
We agree with the Examiner, "the links as presented and claimed are not
limited to only hypertext or hyperlinks," and therefore documents linked via
the "include" commands fall within the scope of the claims. (Ans. 8.) We
note Koinuma specifically refers to the embedded documents as connected
via "links." (Koinuma Fig. 12, i-f 76-77.).
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