Ex Parte MILTON

Board of Patent Appeals and Interferences

Jul 7, 2010

09273021 (B.P.A.I. Jul. 7, 2010)

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.
09/273,021 03/19/1999 HAROLD W. MILTON JR. MILT.777 6459
7590 07/07/2010
HAROLD W. MILTON JR.
2430 WINDBROOK RUN
BLOOMFIELD HILLS, MI 48304
EXAMINER
RIES, LAURIE ANNE
ART UNIT PAPER NUMBER
2176
MAIL DATE DELIVERY MODE
07/07/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HAROLD W. MILTON JR.
____________

Appeal 2008-005996
Application 09/273,0211
Technology Center 2100
____________

Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed March 19, 1999. The real parties in interest are Harold
W. Milton, Jr. and Patent Architect LLC.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2008-005996
Application 09/273,021

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1, 3, 10, and 19-28, which are all
the claims remaining in the application, as claims 2, 4-9, and 11-18 are
cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
The present invention relates to preparing a patent application which
is acceptable to and conforms and facilitates the translation and filing in the
various jurisdictions of the world. (Spec., 1, ll. 8-10.)
Claim 1 is illustrative:
1. A method of preparing a patent application with a computer
comprising the steps of:
storing a document template in a computer program which
contains headings equivalent to:
“BACKGROUND OF THE INVENTION
1) Field of the Invention
2) Description of the prior Art
SUMMARY OF THE INVENTION AND ADVANTAGES
BRIEF DESCRIPTION OF THE DRAWINGS
DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENT
CLAIMS
ABSTRACT OF THE DISCLOSURE”;
storing a page break immediately before the “CLAIMS”
heading in the computer program;
Appeal 2008-005996
Application 09/273,021

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storing a page break immediately before the “ABSTRACT OF
THE DISCLOSURE” heading in the computer program;
storing a footer in the computer program for displaying the
attorney file identification on every page of the application;
composing by a user an independent claim in the computer
program ending in a clause beginning with the words “characterized
by” and reciting and isolating the novelty and preceded by at least one
clause reciting prior art elements to the extent necessary to support
and provide antecedent basis for the “characterized by” clause;
drafting claims in the computer ultimately dependent upon the
independent claim for successively more specifically defining the
patentable novelty; and
characterized by storing a duplicate set of all of the claims in
the computer program, and creating the description by retrieving the
duplicate set of claims under the heading “DESCRIPTION OF THE
PREFERRED EMBODIMENT”, searching for each occurrence of the
word “said” in the duplicate set of claims copied into the
specification, programming the computer program to replace the word
“said” with the word “the” in the duplicate set of claims copied into
the specification, and editing the duplicate set of claims copied into
the specification into grammatically correct sentence structure
including adding verbs, and assigning reference numerals for the first
time by the steps of storing the element names of the elements in the
order recited in the duplicate set of claims, storing successive numbers
beginning with a number above the highest Figure number to identify
the respective element names, and searching for each occurrence of
each respective element name in the order of occurrence in the
duplicate set of claims, replacing each respective element name with
that respective element name followed by successive ones of said
numbers to provide identifying reference numerals for the element
names in the order of occurrence in the duplicate set of claims and
automatically shifting the reference numerals in response to changing
the order of occurrence in the duplicate set of claims.
Appeal 2008-005996
Application 09/273,021

4
Appellant appeals the following rejections:
1. Claims 1, 3, 21, 22, and 26 under 35 U.S.C. § 103(a) as
unpatentable over Petruzzi (US 6,049,811, Apr. 11, 2000) and Rivette (US
5,754,840, May 19, 1998); and
2. Claims 10, 19, 20, 23-25, 27, and 28 under 35 U.S.C. § 103(a) as
unpatentable over Petruzzi, Rivette, and Newman (US 5,774,833,
June 30, 1998).

FACTUAL FINDINGS
Rivette
1a. Rivette discloses “[a] system and method for assisting in the
preparation of a document, . . . such as a patent or patent application. . . . The
system also facilitates editing of the patent application so as to achieve
terminology consistency.” (Abstract.)
2a. In Rivette, “the DDMT [document development and maintenance
too] 202 determines whether the reference numbers (also called element
numbers) contained in the current document have been previously indexed.”
(Col. 14, ll. 27-29.)
3a. Rivette discloses that “[t]he element index table 2402 includes a
row or record for each reference number. Each record identifies the
reference number, the number of hits of the reference number contained in
the current document, and the element name associated with the reference
number.” (Col. 14, ll. 37-41.)
Appeal 2008-005996
Application 09/273,021

5
ANALYSIS
Our representative claim, claim 1, recites, inter alia, “assigning
reference numerals for the first time by the step of storing the element names
of the elements in the order recited in the duplicate set of claims.”
Independent claims 19, 20, 21, and 26 recite similar limitations. Thus, the
scope of each of the independent claims includes providing an identifying
reference numeral in the order of occurrence.

Issue: Did the Examiner err in finding that the combination of
Petruzzi and Rivette, particularly Rivette, discloses providing identifying
reference numerals for the element names in the order of occurrences?

The Examiner found that “Rivette teaches an order of occurrence of
elements in the description including assigning numerals in the order of the
first recitation of the element in an edited duplicate set of claims that created
the description.” (Ans. 11-12.)
Appellant contends that Petruzzi “does not suggest the pre-step of
copying the claims into the description section before applying reference
numerals to element names.” (App. Br. 13.) Appellant further contends that
Rivette “does not suggest numbering elements in the order recited in the
description let alone automatically re-numbering when the order shifts.”
(Id.) We agree with Appellant.
Appeal 2008-005996
Application 09/273,021

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Here, the Examiner relies primarily upon Rivette to disclose assigning
reference numerals to the element names, however, we find that the
Examiner has not provided sufficient evidence in Rivette to show such a
feature. For example, Rivette discloses editing an existing patent application
so as to achieve terminology consistency (FF 1) by determining whether the
reference numbers contained in the current document have been indexed (FF
2). In Rivette, the reference numbers are indexed by the number of hits and
the element names associated with the reference number (FF 3). In other
words, all indications show that Rivette starts with an application with
existing reference numerals and uses these numerals to verify element names
consistency within the application.
However, the Examiner has not shown where/how Rivette assigns the
reference numerals. Instead, the cited portions of Rivette starts with a
document with existing reference numerals and looks to edit the document to
achieve terminology consistency by searching for the reference numbers, not
assigning them.
As such, neither the Examiner nor the cited portions of Rivette explain
how reference numerals are assigned. Without more of an explanation from
the Examiner to correlate the teachings of Rivette to the claimed “assigning
reference numerals for the first time,” we do not see how the cited portions
of Rivette correspond to above-noted limitations, as recited in claim 1.
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellant has the burden of presenting a rebuttal to the
Appeal 2008-005996
Application 09/273,021

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prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Here,
Appellant’s rebuttal is persuasive.
Thus, based on the record before us, we find that the Examiner did err
in rejecting claim 1. Accordingly, we reverse the rejections of independent
claims 1, 19, 20, 21, and 26 as well as associated dependent claims 3, 10, 22-
25, 27, and 28.

DECISION
We reverse the Examiner’s § 103 rejections.

REVERSED

rwk

HAROLD W. MILTON JR.
2430 WINDBROOK RUN
BLOOMFIELD HILLS MI 48304