Ex Parte Poynor

Board of Patent Appeals and Interferences

Oct 25, 2010

09972681 (B.P.A.I. Oct. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TODD ALLAN POYNOR
____________

Appeal 2009-005053
Application 09/972,681
Technology Center 2100
____________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, THU A. DANG,
Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
The Patent Examiner rejected claims 1, 3-6, 8-10, 13, 17, 19-21, 23-
25, 27, 29, and 32. The Appellant appeals therefrom under 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).

1 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.

INVENTION
The Appellant's invention "anticipat[es] edits within a file." (Spec. 1.)
More specifically, "an edit region is designated within the file . . . [and] an
initial edit is effected on an original character string within the designated
edit region . . . ." (Abstract, ll. 2-9.) "[S]ubsequent instances of the original
character string are identified only within the edit region . . . and suggested
edits to the subsequent instances of the original character string are derived
from the initial edit . . . ." (Id.)

ILLUSTRATIVE CLAIM
32. A method comprising:
designating plural edit regions within at least one file, the
plural edit regions linked together and distributed throughout
the at least one file;
effecting an initial edit on an original character string
within at least one of the designated edit regions;
identifying subsequent instances of the original character
string only within the linked edit regions; and
generating suggested edits, based on the initial edit, of
the identified subsequent instances of the original character
string within the linked edit regions.

REJECTIONS
Claims 24, 25, 27, and 32 stand rejected Under 35 U.S.C. § 102(a) as
being anticipated by Microsoft Excel 2000 ("Excel").
Claims 1, 3-6, 8, 9, 13, 17, 19-21, 23, and 29 stand rejected Under
35 U.S.C. § 103(a) as being unpatentable over Microsoft Word 2000,
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Application 09/972,681
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Microsoft Corporation 1999, screenshots 1-23 ("Word 2000") and U.S.
Patent Application Publication No. 2004/0162842 A1 ("Ono").
Claim 10 stands rejected under § 103(a) as being unpatentable over
Word 2000; Ono; and U.S. Patent No. 6,243,859 B1 ("Chen-Kuang").

CLAIMS 24, 25, 27, AND 32
Based on the Appellant's arguments, we will decide the appeal of
claims 24, 25, and 32 on the basis of claim 32 alone. See 37 C.F.R.
§ 41.37(c)(1)(vii).
The issues before us are (1) whether the Examiner erred in finding
that Excel discloses generating suggested edits as required by claim 32 and
(2) whether the Examiner erred in finding that Excel discloses a hierarchical
log of edit regions as required by claim 27.

FINDINGS OF FACT
Regarding claim 32, the Examiner makes the following findings.
In Excel 2000, when taking the word "memory" for replacing
identified subsequent instances of original character string
"system" in the linked edit regions, the suggested edits of the
identified subsequent instances are generated since the linked
edit regions are updated with the suggested edits "memory" for
all original character strings "system."
(Ans. 14.)
Regarding claim 27, the Examiner makes the following findings.
Excel discloses maintaining the designated edit regions as part
of a hierarchical log of edit regions (pages 3-5: apply Delete,
which is an Edit function, on the word "system" within the
different regions A1:C18 and A12:C19 showing that a
hierarchical log of said edit regions are maintained; it is noted
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that the hierarchical log of edit regions is interpreted the same
as the hierarchical log disclosed on page 7 of the invention
where editing for a string character can be applied for different
edit regions).
(Id. at 4.)

ANALYSIS
"It is not the function of [the U.S. Court of Appeals for the Federal
Circuit] to examine the claims in greater detail than argued by an appellant,
looking for nonobvious distinctions over the prior art." In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991). "Similarly, it is not the
function of this Board to examine claims in greater detail than argued by an
appellant, looking for distinctions over the prior art." Ex Parte Shen,
No. 2008-0418, 2008 WL 4105791 at * 9 (BPAI 2008).
Here, the Examiner makes the aforementioned "specific and detailed
findings," Ex parte Belinne, 2009 WL 2477843, at *4 (BPAI Aug. 10, 2009)
(informative), regarding claims 32 and 27. For his part, the Appellant does
not address these findings. Instead, he merely alleges that "[n]o such
generation of suggested edits is taught by Microsoft Excel 2000" (Appeal
Br. 11) and that "[t]here is absolutely no teaching whatsoever in Excel 2000
of such hierarchical log of edit regions." (Id. at 12.) These allegations "do
not . . . explain why the Examiner's explicit fact finding is in error."
Belinne, at *4
Therefore, we conclude that the Examiner did not err in finding that
(1) Excel discloses generating suggested edits as required by claim 32 and
(2) Excel discloses a hierarchical log of edit regions as required by claim 27.

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CLAIMS 1, 3-6, 8, 9, 13, 17, 19-21, 23, AND 29
Based on the Appellant's arguments, we will decide the appeal of
claims 1, 3-6, 8, 9, 13, 19-21, 23, and 29 on the basis of claim 1 alone and
the appeal of claims 17 and 23 on the basis of claim 17 alone.
The issues before us are (1) whether the Examiner erred in combining
teachings from Word 2000 and Ono in rejecting claim 1, and (2) whether the
Examiner erred in taking official notice that providing a hierarchical log of
edit regions as required by claim 17 was well known.

FINDINGS OF FACT
The Examiner's following findings are uncontested.
Word 2000 discloses:
. . .
effecting an initial edit on an original character string
within the designated edit region (page 6: by selecting the
Find and Replace option under Edit for text in the
highlighted portion to find the word "pan" and replace
with the word "play", the first "pan" within "his use of
the expression pan" in said part is changed to become
"play" showing the initial edit on the original character
string "pan" within the designated edit region)
identifying subsequent instances of the original character
string only within the edit region (pages 7-10: by
pressing "Find Next", the subsequent instances of the
string "pan" in said selected part are highlighted) . . . .
(Ans. 5-6.)
Ono discloses:
displaying a list of the identified subsequent instances of
the original character string (figures 12-13, [0127],
[0155]-[0156]: the subsequent instances of a keyword,
which is equivalent to an original character string are
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displayed in a portion of a document; it is noted that the
way Ono displays a list of the identified subsequent
instances of the original character string is the same as
how the identified subsequent instances of the original
character string are displayed in a document as disclosed
in figures 4 and 5 of the invention)[.]
(Id. at 6-7.)

ANALYSIS
We address the issues seriatim.
Combining teachings from Word 2000 and Ono
The Examiner makes the following conclusion and findings.
It would have been obvious to one of ordinary skill in the art at
the time of the invention was made to have combined Ono into
Word 2000 since the display of list of the subsequent instances
of original character as in Ono would provide the advantage to
incorporate into Word 2000 for easily locating all subsequent
instances of the original character in a document so that a user
has a quick overview to make a decision whether or not to
apply an edit on each subsequent instance instead of going
through the subsequence instances one at a time.
(Ans. 7.)
The Appellant makes the following argument.
The Examiner is essentially proposing that hypertext links be
embedded into the Find and Replace dialog box of Word 2000,
which is a completely unnecessary feature in that it would
clearly not make the finding and replacing of text in Word 2000
any easier, and in fact, would present significant complexities
that would likely render Word 2000 inoperative for its intended
purpose.
(App. Br. 8-9.)
The test for obviousness is not whether the features of a reference may
be bodily incorporated into the structure of another reference but what the
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combined teachings of those references would have suggested to one of
ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, we agree with the Examiner's following response.
Ono is cited for showing merely displaying a list of subsequent
instances of a character string in a same manner as displaying
the list of subsequent instances of a character string in
figures 4-5 of the instant application. The search feature or the
linking feature in Ono is not applied . . . .
(Ans. 12.) The Appellant's argument overlooks "the relevant combined
teachings of the . . . references." Andersen, 391 F.2d at 958 (dismissing the
argument that a combination would result in an inoperative structure).
Therefore, we conclude that the Examiner did not err in combining
teachings from Word 2000 and Ono in rejecting claim 1.

Taking official Notice
The Examiner takes official notice that "[t]he log of one edit region,
when expanded to a plurality of edit regions, would obtain a hierarchical log
of said plurality of edit regions and such a log, when stored, is maintained
for processing data where storing is well known . . . in processing data."
(Final Rej. 8 (emphasis added).)
An adequate traverse to such a finding of official notice must "contain
adequate information or argument to create on its face, a reasonable doubt
regarding the circumstances justifying the . . . notice," In re Boon, 439 F.2d
724, 728 (CCPA 1971), of what is well known to one of ordinary skill in the
art. "To adequately traverse such a finding [of official notice], an applicant
must specifically point out the supposed errors in the examiner's action,
which would include stating why the noticed fact is not considered to be
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common knowledge or well-known in the art. See 37 CFR 1.111(b)." MPEP
§ 2144.03(C). "If applicant does not traverse the examiner's assertion of
official notice or applicant's traverse is not adequate, . . . the common
knowledge or well-known in the art statement is taken to be admitted prior
art . . . ." Id.
Here, the Appellant merely alleges that "[t]he assertions made by the
Examiner are purely the opinion of the Examiner, and thus, do not constitute
proper evidence to support the obviousness rejection of claim[ ] 17 . . . ."
(Appeal Br. 10.) This allegation contains no information or argument to
create on its face, a reasonable doubt regarding the circumstances justifying
the official notice. More specifically, the allegation does not explain why
the noticed fact is not considered to be common knowledge or well-known
in the art.
Because the Appellant's traversal is inadequate, moreover, we take the
fact that "[t]he log of one edit region, when expanded to a plurality of edit
regions, would obtain a hierarchical log of said plurality of edit regions and
such a log, when stored, is maintained for processing data where storing,"
(Final Rej. 8), to be admitted prior art. Therefore, we conclude that the
Examiner did not err in taking official notice that providing a hierarchical
log of edit regions as required by claim 17 was well known.

CLAIM 10
The issues before us are (1) whether the Examiner erred in combining
teachings from Word 2000, Ono, and Chen-Kuang and (2) whether the
Examiner erred in finding that the combined teachings of these references
would have suggested effecting an initial edit on an original character string
within a designated edit region of a source code file, and identifying
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subsequent instances of the original character string only within the edit
region as required by claim 10.

FINDINGS OF FACT
Chen-Kuang discloses "[a] method of extracting and saving program
codes in time while the program is being edited." (Abstract, ll. 1-2.)

ANALYSIS
We address the issues seriatim.
Combining teachings from Word 2000, Ono, and Chen-Kuang
The presence or absence of a reason "to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000). "The obviousness analysis cannot be
confined . . . by overemphasis on the importance of published articles and
the explicit content of issued patents. The diversity of inventive pursuits and
of modern technology counsels against limiting the analysis in this way."
KSR Int'l v. Teleflex Inc., 50 U.S. 398, 419 (2007). A reason to combine
teachings from the prior art "may be found in explicit or implicit teachings
within the references themselves, from the ordinary knowledge of those
skilled in the art, or from the nature of the problem to be solved." WMS
Gaming Inc. v. Int'l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999)
(citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
Here, the Examiner makes the following conclusion and findings.
It would have been obvious to one of ordinary skill in the art at
the time of the invention was made to have combined Chen-
Kuang [sic] into Word 2000 and Ono since Chen-Kuang [sic]
discloses modifying data structures of the program code
including variables, function names, and variable types
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providing the advantage to incorporate this feature into Word
2000 for further applying modifying to an edit region of the
source code file instead of limiting the modification on the
normal text file.
(Ans. 11-12.) These findings are persuasive.
For his part, the Appellant does not address, let alone, show error in
these findings. Instead, he merely argues that "Chen-Kuang [sic] does not
hint at a modification of Word 2000/Ono to achieve the claimed subject
matter." (App. Br. 11.)
We find the argument too limiting: Chen-Kuang need not hint at a
reason to combine its teachings with those of Word 2000 and Ono. The
ordinary knowledge of those skilled in the art that further the combination
would have enabled modifying an edit region of a source code file instead of
limiting the modification to a text file suffices. Therefore, we conclude that
the Examiner did not err in combining teachings from Word 2000, Ono, and
Chen-Kuang.

What the combined teachings of these references would have Suggested
"The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art." In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981)). "Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references." In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d at 425). In determining
obviousness, furthermore, a reference "must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole." Id.
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Here, the Examiner rejects claim 10 based on what the combined
teachings of Word 2000, Ono, and Chen-Kuang would have suggested to
one of ordinary skill in the art. More specifically, the Examiner makes the
following uncontested findings.
Word 2000 discloses:
. . .
effecting an initial edit on an original character string
within the designated edit region (page 6: by selecting the
Find and Replace option under Edit for text in the
highlighted portion to find the word "pan" and replace
with the word "play", the first "pan" within "his use of
the expression pan" in said part is changed to become
"play" showing the initial edit on the original character
string "pan" within the designated edit region)
identifying subsequent instances of the original character
string only within the edit region (pages 7-10: by
pressing "Find Next", the subsequent instances of the
string "pan" in said selected part are highlighted)[.]
(Ans. 10.) "Chen-Kuang discloses [sic]: - selecting a portion in a source
code file for editing (col. 9, lines 10-67) . . . ." (Id. at 11.)
For his part, the Appellant argues that "there is no teaching or hint by
Chen-Kuang [sic] of effecting an initial edit on an original character string
within a designated edit region of a source code file, and identifying
subsequent instances of the original character string only within the edit
region." (Appeal Br. 10.)
Because the rejection is based upon the teachings Word 2000, Ono,
and Chen-Kuang, such an argument about Chen-Kuang individually cannot
establish non-obviousness. Therefore, we conclude that the Examiner did
not err in finding that the combined teachings of these references would
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have suggested effecting an initial edit on an original character string within
a designated edit region of a source code file, and identifying subsequent
instances of the original character string only within the edit region as
required by claim 10.

DECISION
We affirm the rejections of claims 1, 3-6, 8-10, 13, 17, 19-21, 23-25,
27, 29, and 32. 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)(v).

AFFIRMED

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