Ex Parte Farn

Patent Trial and Appeal Board

Sep 24, 2013

11396781 (P.T.A.B. Sep. 24, 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.
11/396,781 04/03/2006 Brian Gin Farn CA920050065US1 4714
46320 7590 09/24/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
QUELER, ADAM M
ART UNIT PAPER NUMBER
2177
MAIL DATE DELIVERY MODE
09/24/2013 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 BRIAN GIN FARN
__________

Appeal 2011-003183
Application 11/396,781
Technology Center 2100
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant has requested rehearing of the decision entered July 12,
2013. That decision affirmed the Examiner’s rejection of claims 27-29
under 35 U.S.C. § 103(a).
Appellant’s request is denied with respect to making any
modifications to the decision affirming the Examiner’s rejection under
35 U.S.C. § 103(a).

Appeal 2011-003183
Application 11/396,781

2
DISCUSSION
Appellant contends that “the broadest reasonable interpretation of
‘markup language document’ does not include a mere table in a database
simply because neither the Examiner nor the Honorable Board has attempted
to establish the presence of ‘markup language’ as a formatting paradigm for
a database” (Req. Reh’g 6).
We are not persuaded by these arguments. We disagree with
Appellant regarding the placement of burden regarding claim interpretation.
It is not the Examiner’s burden to “establish the presence of ‘markup
language’ as a formatting paradigm for a database” (Req. Reh’g 6).
Instead, the Examiner is instructed that “during patent prosecution
when claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed.” In re Zletz, 893
F.2d 319, 322 (Fed. Cir. 1989). In this case, the limitation at issue is
“retrieving data from the model section of the markup language document”
(Claim 27). As we noted in the Decision, the Specification recognizes that
the data may “reference externally defined data” (Spec. 20 ¶ 33; FF 12) and
that the model section itself may “have any number of dataset 224 child
elements that contains explicitly embedded data elements, or a reference to
an external data source” (Spec. 20 ¶ 33; FF 12). Thus, we agreed with the
Examiner that Ruggier rendered this limitation obvious (see Dec. 10).
Appellant further contends that “the ordinary meaning of ‘markup
language document’ is widely understood to be a document formatted
according to a markup language” (Req. Reh’g 5).
Appeal 2011-003183
Application 11/396,781

3
Appellant has not, however, provided any evidence, whether from the
Specification or an external source, supporting a “widely understood”
narrowing definition of the phrase in claim 27 of “retrieving data from the
model section of the markup language document” to exclude the use of a
database. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence.”). See
also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (Arguments and
conclusions unsupported by factual evidence carry no evidentiary weight.)
SUMMARY
We have carefully reviewed the original opinion in light of
Appellant’s request, but we find no other point of law or fact which we
overlooked or misapprehended in arriving at our decision. Therefore,
Appellant’s request has been denied with respect to making any
modifications to the decision affirming the Examiner’s rejections under
35 U.S.C. § 103(a).

DENIED

cdc