Ex Parte Heinkel et al

Patent Trial and Appeal Board

Jul 8, 2014

11670492 (P.T.A.B. Jul. 8, 2014)

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.
11/670,492 02/02/2007 Ulrich Karl Heinkel LCNT/128893 7248
46363 7590 07/08/2014
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
LUDWIG, MATTHEW J
ART UNIT PAPER NUMBER
2178
MAIL DATE DELIVERY MODE
07/08/2014 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 ULRICH KARL HEINKEL,
JOACHIM KNAEBLEIN, and AXEL SCHNEIDER
__________

Appeal 2012-000527
Application 11/670,492
Technology Center 2100
__________

Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants requested rehearing of the decision entered April 16, 2014
(“Decision” or “Dec.”). That decision affirmed the Examiner’s rejection of
claims 1-20 under 35 U.S.C. § 103(a).
Appellants’ request has been granted to the extent that the decision
has been reconsidered, but such request is denied with respect to making any
modifications to the decision affirming the Examiner’s rejection under
35 U.S.C. § 103(a).
DISCUSSION
Appellants contend that the “Board misinterprets Appellants’
arguments. Appellants do dispute that Ashford teaches the identification of
acronyms in a text document using an acronym dictionary. Rather, Ashford
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teaches identification of an acronym expansion, of an acronym already
included within a document, based on selection of the acronym by the user”
(Req. Reh’g 2). Appellants contend that “in Ashford, the descriptor
(acronym) is known to the user and is used as an input in order to identify
the descriptor definition (acronym expansion)” (Req. Reh’g 3). Appellants
contend that “claim 1 indicates that the request for descriptor information is
for use in identifying a descriptor for insertion within a worksheet (i.e., the
descriptor is not known, but, rather, is to be identified based on the
descriptor information)” (Req. Reh’g 3).
We remain unpersuaded by this argument. Claim 1 includes no
requirement that the descriptor is “unknown,” as argued by Appellants.
Instead, claim 1 simply requires “identifying a descriptor,” a task performed
by Ashford who teaches “finding the acronym in an acronym dictionary”
(Spec. 4 ¶ 0042; FF 8). We have already addressed the interpretation of
“receiving a request for descriptor information” in the Decision (see Dec. 8).
Appellants contend that “Ashford does not teach or suggest
identification of an acronym (descriptor) using an acronym dictionary” (Req.
Reh’g 5). Appellants contend that the “statement of FF 8 that ‘finding the
acronym in an acronym dictionary 504 is performed’ has been
misinterpreted as indicating that the acronym is not known to the user” (Req.
Reh’g 5). Appellants further contend that:
Bruecken is directed to enabling the user to obtain the
definition of the word (descriptor definition) for a word
(descriptor) that is already known, which is fundamentally
different than Appellants’ claim 1 in which the request for
descriptor information is for use in identifying a descriptor
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for insertion within a worksheet (i.e., the descriptor is not
known, but, rather, is to be identified).

(Req. Reh’g 6.)
We remain unpersuaded. Since, as discussed in the Decision, claim 1
does not incorporate any requirement that the acronym is “not known to the
user,” it is clear that Ashford’s teaching of “finding the acronym in an
acronym dictionary” (Dec., FF 8; Ashford 4 ¶ 0042) reasonably addresses
the limitation of “identifying a descriptor [i.e. acronym] . . . wherein the
descriptor information is maintained in a descriptor dictionary comprising a
plurality of descriptor entries” as required by claim 1.
Appellants contend that the Board “fails to properly account for the
distinction between a descriptor and a descriptor definition. The Board
references a request to identify a descriptor, which fails to account for the
full step of ‘receiving a request for descriptor information for use in
identifying a descriptor for insertion within a worksheet’” (Req. Reh’g 7).
We are not persuaded. The term “descriptor definition” does not
appear in claim 1 or in Appellants’ Specification, rather the claim uses the
term “descriptor information.” The Examiner has already explained that
“the limitation is taught through the teachings of Ashford when it describes a
user consulting a dictionary (requesting descriptor information). The
reference describes a means for a user to consult a dictionary manually and
automatically through the scanning of documents” (Ans. 9).
Appellants contend that the Decision “ignores that portion of
Appellants’ claim 1 that indicates that presentation of the descriptor entries
enables selection of one of the retrieved descriptor entries for insertion of the
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corresponding descriptor of the selected descriptor entry within the
worksheet” (Req. Reh’g 8).
We remain unpersuaded. We specifically addressed this point (see
Dec. 10), finding that Ashford expressly teaches that “the acronym is
displayed in-line in the text with parenthesis” (Ashford 3 ¶0037; FF 10). We
noted that the most reasonable interpretation of this teaching is that the
acronym (descriptor) identified using the acronym dictionary (FF 8) is
inserted into the worksheet or document (FF 10). Ashford’s “in-line”
teaching reasonably satisfies the requirement of claim 1 “for insertion of the
corresponding descriptor of the selected descriptor entry within the
worksheet.”
Appellants contend that
Ashford is directed to enabling the user to identify the
expansion of the acronym (definition of the descriptor) for
an acronym that is already included in the text, which is
fundamentally different than Appellants’ claim 1 in which
the request for descriptor information is for use in
identifying a descriptor for insertion within a worksheet (i.e.,
the descriptor is not known, but, rather, is to be identified).

(Req. Reh’g 8.)
We are not persuaded. As discussed above, claim 1 does not include a
requirement that the “descriptor is not known.” Thus, the asserted
fundamental difference is not reflected in the actual language of the claim.
As explained by the Examiner’s Answer and in our Decision, Ashford and
Bruecken together render the elements recited in claim 1 obvious.
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SUMMARY
We have carefully reviewed the original opinion in light of
Appellants’ request, but we find no other point of law or fact which we
overlooked or misapprehended in arriving at our decision. Therefore,
Appellants’ request has been granted to the extent that the decision has been
reconsidered, but such request is denied with respect to making any
modifications to the decision affirming the Examiner’s rejection under
35 U.S.C. § 103(a).

DENIED

cdc