Ex Parte LaComb et al

Board of Patent Appeals and Interferences

May 18, 2012

10401259 (B.P.A.I. May. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHRISTINA LACOMB, JOSHUA TEMKIN,
MELVIN SIMMONS, ERIC KLEIN, and MARC LAYMON
____________________

Appeal 2010-001817
Application 10/401,259
Technology Center 2100
____________________

Before: LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL

Appeal 2010-001817
Application 10/401,259
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STATEMENT OF CASE
The Patent Examiner rejected claims 1-50. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
INVENTION
Claim 1, which follows, is illustrative of the claimed subject matter.
1. A method for automatically understanding a document,
the method comprising:
utilizing algorithms to automate the understanding of a
document,
wherein no prior identification of a document type is
required, no prior identification of an expected format for the
document type is required, and no pre-created scripts are
required to map contents of the document.1

REFERENCES AND REJECTIONS
Alam
Johnson
Alam
US 5,737,442
US 5,813,009
US 6,336,124
Apr. 7, 1998
Sep. 22, 1998
Jan. 1, 2002
Richter US 2004/0205524 A1 Oct. 14, 2004

1 In any subsequent prosecution, the Examiner would do well to consider
whether claim 1 "recite[s] any tangible practical application in which the
mathematical algorithm[s] [are] applied that result in a real-world use[,]" Ex
Parte Gutta, 93 USPQ2d 1025, 1033 (BPAI 2099) (precedential) or recites
"a practical application with concrete steps . . . ." Dealertrack, Inc. v.
Huber, 674 F.3d 1315, 1334 (Fed. Cir. 2012.)

Appeal 2010-001817
Application 10/401,259
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Claims 1 and 24 stand rejected under 35 U.S.C §102(b) as being
anticipated by Alam (124).
Claims 25, 26, 29-31, 34, 35, 37-39, 42-44, 47, 48, and 50 stand
rejected under 35 U.S.C §103(a) as being unpatentable over Alam (124).
Claims 2, 3, 5, 10-12, 14, 32, 33, 36, 45, 46, and 49 stand rejected
under 35 U.S.C §103(a) as being unpatentable over Alam (124) and Richter.
Claims 4, 6-9, 15-23, 27, 28, 40, and 41 stand rejected under 35 U.S.C
§103(a) as being unpatentable over Alam (124), Richter, and Alam (442).
Claim 13 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Alam (124), Richter, and Johnson.

DISCUSSION
We are unpersuaded by the Appellants’ arguments against the
Examiner’s rejections of claims 1-50. We adopt as our own (1) the findings
and conclusions set forth by the Examiner in the Office action from which
this appeal is taken and (2) the claim constructions, findings, and
conclusions set forth by the Examiner in the Examiner’s Answer (pp. 3-5,
21-25) in response to the Appellants’ Appeal Brief. We highlight and
address the following arguments only for emphasis.
The Appellants argue that "[t]he Alam reference . . . does not mention
any 'no prior identification of a document type', nor any 'no prior
identification of an expected format for the document type', nor any 'no pre
created scripts are required to map the contents of the document'." (Reply
Br. 7.)
"[T]he PTO gives claims their 'broadest reasonable interpretation.'" In
re Bigio, 381 F.3d 1320, 1324, (Fed. Cir. 2004) (quoting In re Hyatt, 211
Appeal 2010-001817
Application 10/401,259
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F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184, (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321(Fed. Cir.
1989)).
Here, the argument is not commensurate with the limitations of
representative claims 1 and 25. Giving the limitation that "no . . . is[/are]
required," the broadest reasonable interpretation, the representative claims
do not exclude the presence of prior identification of a document type, prior
identification of an expected format for the document type, or pre created
scripts to map the contents of the document.
The Appellants also use the Reply Brief to introduce the following
new arguments. "[T]he Alam reference, and the Examiner's rejection, both
fail to address the 'utilizing algorithms to automate' element . . . ." (Reply
Br. 6.) "[T]he Alam reference, and the Examiner's rejection, both fail to
address the 'identification' and 'scripts' elements . . . ." (Id. at 10.)
"Any bases for asserting error, whether factual or legal, that are not
raised in the principal brief are waived." Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative). See also Optivus Tech., Inc. v. Ion
Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not
raised by an appellant in its opening brief . . . is waived.") (citations and
quotation marks omitted).
Here, the Examiner's findings that Alam teaches "[u]tilizing
algorithms to automate the understanding of a document" (Ans. 3) and "no
prior identification of a document type is required, no prior identification of
an expected format for the document type is required, and no precreated
scripts are required" (id. at 3) are identical to those in the Final Rejection
(p. 3), from which the instant appeal was taken. Because the findings are
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Application 10/401,259
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identical, we find nothing that would have prompted the new argument in
the Reply Brief. The Appellants could have made the argument in their
Appeal Brief. The term "Reply Brief" is exactly that, a brief in reply to new
rejections or new arguments set forth in an Examiner’s Answer. The
Appellants may not present arguments in a piecemeal fashion, holding back
arguments until an examiner answers the original brief. This basis for
asserting error is waived.

DECISION
We affirm the rejections of claims 1-50.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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