Ex Parte Nelson

Board of Patent Appeals and Interferences

Feb 9, 2012

10906651 (B.P.A.I. Feb. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THEODORE HOLM NELSON
____________________

Appeal 2011-003485
Application 10/906,651
Technology Center 2100
____________________

Before ERIC S. FRAHM, KRISTEN L. DROESCH, and KALYAN K.
DESHPANDE, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE1
The Appellant seeks review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-26, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

The Appellant invented an operator interface with which a user can
interact with linked node groupings to navigate within a structure by
following the links from one node to another. Specification ¶ 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added]:
1. A method for working with data in datasets or information
structures, wherein at least some of the data has latent
preferences for connection with the data in other datasets or
information structures, the method comprising the steps of:
[1] storing the data for each of the datasets or information
structures into a slice of separable cells having actual
connections forming independent relational orderings in one or
more dimensions;
[2] examining said cells in each said slice for the latent
preferences and identifying said cells having data seeking
additional connection as choosing cells and said cells sought to
be additionally connected to as target cells;
[3] adding a latent connection to either said choosing cell or
said target cell for each of the latent preferences;
[4] expressing at least one said slice into said one or more of
the conglomerate structures; and

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Sept. 22, 2010) and Reply Brief (“Reply Br.,” filed Dec. 9, 2012),
and the Examiner’s Answer (“Ans.,” mailed Nov. 26, 2010), and Final
Rejection (“Final Rej.,” mailed Sept. 15, 2010).
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[5] presenting said at least one said slice in an operator
interface, thereby permitting a user to interact with the data in
said at least one said slice.

REFERENCES
The Examiner relies on the following prior art:
Nelson US 6,262,736 Jul. 17, 2001

Theodore Holm Nelson, What’s On My Mind, Jun. 25, 1998,
http://www.xanadu.com.au/ted/zigzag/xybrap.html (“WOMM”).

Theodore Holm Nelson, ZZ Cell Programming, Dec. 6, 1999,
http://www.xanadu.com/zigzag/fw99/ZZcellProg.html (“ZZCell”).

REJECTIONS2
Claim 1-26 stand rejected under 35 U.S.C §112, first paragraph, as
failing to comply with the enablement requirement.
Claims 1-4, 6, 9-13, 15, 18-22, and 24 stand rejected under 35 U.S.C
§103(a) as being unpatentable over WOMM and Nelson.
Claims 5, 7, 8, 14, 16, 17, 23, 25, and 26 stand rejected under 35
U.S.C §103(a) as being unpatentable over WOMM, Nelson, and ZZCell.

2 We have decided the appeal before us. However, should there be further
prosecution of the claims, the Examiner's attention is directed to recently
issued guidance from the Director and our reviewing court, as follows
below.
Specifically, should there be further prosecution with respect to claims 9-18,
the Examiner’s attention is directed to In re Nuijten, 500 F.3d 1346 (Fed.
Cir. 2007), and Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).

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ISSUES
The issue of whether the Examiner erred in rejecting claims 1-26
under 35 U.S.C §112, first paragraph, as failing to comply with the
enablement requirement turns on whether the Specification teaches a person
with ordinary skill in the art how to make and use the claimed invention
without undue experimentation, including how to identify choosing cells and
target cells after examining cells for latent preferences, as required by
limitation [2] of claim 1.
The issue of whether the Examiner erred in rejecting claims 1-4, 6, 9-
13, 15, 18-22, and 24 under 35 U.S.C §103(a) as being unpatentable over
WOMM and Nelson turns on whether the cited prior art teaches or suggests
“latent preferences,” “latent connections,” “choosing cells,” and “target
cells.”
The issue of whether the Examiner erred in rejecting claims 5, 7, 8,
14, 16, 17, 23, 25, and 26 under 35 U.S.C §103(a) as being unpatentable
over WOMM, Nelson, and ZZCell turns on whether the Appellant’s
arguments in support of claims 1, 9, and 18 are found to be persuasive.

ANALYSIS
Claim 1-26 rejected under 35 U.S.C §112, first paragraph, as failing
to comply with the enablement requirement
The Examiner found that the Specification fails to teach latent
preferences and latent connections in a manner that a person with ordinary
skill in the art would know how to make and use the claimed invention
without undue experimentation. Ans. 4-5. The Appellant contends that the
Examiner has “cherry-picked” portions of the Specification without proper
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context and cites to paragraphs 26-27, 29, 33-34, 40, and 57-60 of the
Specification for support. App. Br. 16-21 and Reply Br. 2-3.
We disagree with the Appellant. Claims 1, 9, and 18 recite examining
cells for latent preferences and identifying cells as choosing cells and target
cells. Claims 1, 9, and 18 further require adding a latent connection based
on the identification of the cell. The Specification fails to teach the steps of
examining cells and identifying cells as choosing cells and target cells in
order to add a latent connection to the cells in a manner that a person with
ordinary skill in the art can make or use the claimed invention without undue
experimentation. The Specification generally alludes that cells will “prefer”
a manner to be connected to other cells. Specification ¶ 29. This preference
may be based on “secret memories” or “yearnings of cells” in other slices.
Specification ¶ 59. However, the Specification fails to teach exactly how
these preferences will be identified such that a latent connection can be
added to the cell. As such, a person with ordinary skill in the art would
require undue experimentation to make or use the claimed invention.
The Appellant further argues that the Specification teaches “latent
connections” and “latent preferences” in the paragraphs cited supra and
therefore the claimed invention is enabled. App. Br. 19-20. While we agree
that these terms are described by the Specification, the steps of examining
cells and identifying choosing cells and target cells such that a latent
connection can be added is not taught by the Specification such that undue
experimentation would not be required by a person with ordinary skill in the
art.
We understand the Appellant’s choice to use human-centric
terminology, and that the Appellant has chosen to been his own
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lexicographer. App. Br. 20. However, whatever terminology the Appellant
chooses to use still must enable the claimed invention. The Appellant has
failed to provide any persuasive rationale or evidence to illustrate how the
Specification teaches the steps of examining cells and identifying choosing
cells and target cells based on latent preferences and adding a latent
connection based on this identification. As such, we sustain the Examiner’s
rejection of claims 1-26 under 35 U.S.C. § 112, first paragraph, for failing to
comply with the enablement requirement.

Claims 1-4, 6, 9-13, 15, 18-22, and 24 rejected under 35 U.S.C
§103(a) as being unpatentable over WOMM and Nelson
The Appellant contends that WOMM and Nelson fail to teach or
suggest “latent preferences,” “latent connections,” “choosing cells,” and
“target cells” as required by independent claims 1, 9, and 18. App. Br. 21-
28 and Reply Br. 4-5. We agree with the Appellant.
The Examiner found that the linkage of a date (Apr. 14) with a day
(Tuesday) describes cells opening and displaying different content for each
cell, which is the same as choosing cells and target cells. Ans. 11-13.
However, the Examiner has failed to clearly provide any rationale or
evidence to illustrate exactly how the steps of opening cells and displaying
information is the same as the claimed choosing cells and target cells.
Furthermore, the Examiner fails to provide any persuasive rationale or
evidence to illustrated how the cited prior art teaches or suggests latent
preferences or latent connections. As such, we do not sustain the
Examiner’s rejection of claims 1, 9, and 18, and their dependent claims, for
these reasons.
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Since this issue is dispositive as to the rejection of these claims, we
need not reach the remaining issues raised by the Appellant.

Claims 5, 7, 8, 14, 16, 17, 23, 25, and 26 rejected under 35 U.S.C
§103(a) as being unpatentable over WOMM, Nelson, and ZZCell
The Appellant contends that WOMM, Nelson, and ZZCell fail to
describe claims 5, 7, 8, 14, 16, 17, 23, 25, and 26 for the same reasons
discussed supra in support of claims 1, 9 and 18. App. Br. 30. We agree
with the Appellant. The Appellant’s arguments were found to be persuasive
supra and are persuasive here for the same reasons. Since this issue is
dispositive as to the rejection of these claims, we need not reach the
remaining issues raised by the Appellant.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-26 under 35 U.S.C
§112, first paragraph, as failing to comply with the enablement requirement.
The Examiner erred in rejecting claims 1-4, 6, 9-13, 15, 18-22, and 24
under 35 U.S.C §103(a) as being unpatentable over WOMM and Nelson.
The Examiner erred in rejecting claims 5, 7, 8, 14, 16, 17, 23, 25, and
26 under 35 U.S.C §103(a) as being unpatentable over WOMM, Nelson, and
ZZCell.

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DECISION
To summarize, our decision is as follows.
 The rejection of claims 1-26 under 35 U.S.C §112, first paragraph, as
failing to comply with the enablement requirement is sustained.
 The rejection of claims 1-4, 6, 9-13, 15, 18-22, and 24 under 35 U.S.C
§103(a) as being unpatentable over WOMM and Nelson is not
sustained.
 The rejection of claims 5, 7, 8, 14, 16, 17, 23, 25, and 26 under 35
U.S.C §103(a) as being unpatentable over WOMM, Nelson, and
ZZCell is not sustained.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

AFFIRMED

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