Ex Parte Pratt

Patent Trial and Appeal Board

Sep 25, 2012

11266990 (P.T.A.B. Sep. 25, 2012)

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.
11/266,990 11/04/2005 Allan K. Pratt LOT920050109US1 (020) 1900
46321 7590 09/25/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
SWIFT, CHARLES M
ART UNIT PAPER NUMBER
2196
MAIL DATE DELIVERY MODE
09/25/2012 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 ALLAN K. PRATT
____________
Appeal 2011-006090
Application 11/266,990
Technology Center 2100
____________

Before JAMESON LEE, KEVIN F. TURNER, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006090
Application 11/266,990

2
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-15. App. Br. 2.
1
We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellant’s Invention
Appellants invented a system, method, and computer program product
that generally relates to document editing and, in particular, to processing
static elements referenced within a document and stored externally to the
document. Spec. ¶ [0001].
Illustrative Claim
4. The system of claim 1, wherein the automated
de- externalization and re-externalization processor comprises
additional program code enabled to insert during
de-externalization a replaced static element reference in the
subject document within a comment tag in proximity to a
corresponding static element in the subject document.

Prior Art Relied Upon
Zhou US 2002/0162093 A1 Oct. 31, 2002
Bustelo US 2006/0090154 A1 Apr. 27, 2006
(filed Oct. 7, 2004)

Fog Creek Software, “How often do you delete code?” The Old Joel
on Software Forum (May 2002)(hereinafter “Fog Creek”).

1
All references to the Appeal Brief are to the Appeal Brief
filed October 27, 2010, which replaced the Appeal Brief filed
September 20, 2010.
Appeal 2011-006090
Application 11/266,990

3
Rejection on Appeal
Claims 1-15 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Zhou and Bustelo. Ans. 4-20.
Examiner’s Findings and Conclusions
The Examiner relies upon a finding of Official Notice to reject
dependent claim 4 and cites to Zhou at paragraph [0100] to support his
position. Ans. 21. The Examiner concludes that “it would be obvious to
insert the replaced function call within a comment tag in proximity to the
corresponding local specific content because it would provide the
corresponding function call for the local-specific content in a format that is
easily understood by . . . programmers.” Ans. 10 and 21. The Examiner
finds that commenting out old code instead of deleting the code during
software modification is common practice in the field of software
engineering. Ans. 21. That is, the Examiner finds that inserting old code
(i.e., the claimed static element reference) into comment tags ensures that
the old code cannot be compiled and executed by the computer, but also
preserves the old code so that it can act as a reference or fallback point
should the new or replacement code (i.e., the claimed static element) not
work. Id. Further, the Examiner references a supplemental non-patent
literature article—titled “How often do you delete code?”—as evidentiary
support to justify the Examiner’s finding of Official Notice. Id.
Appellant’s Contentions
Appellant contends that rather than take Official Notice of any factual
element relied upon when rejecting dependent claim 4, the Examiner merely
states that the corresponding claim limitation is “obvious” based upon the
Examiner’s own, non-expert, amateur reasoning without any evidentiary
Appeal 2011-006090
Application 11/266,990

4
support. Reply Br. 3. Appellant argues that it is inappropriate for the
Examiner to take Official Notice of facts without citing a prior art reference
indicating that the facts asserted are capable of instant and unquestionable
demonstration as being well known. Id. at 4. Moreover, Appellant asserts
that it is not appropriate for the Examiner to rely solely on common
knowledge in the art without evidentiary support in the record as the
principal evidence upon which a rejection was based. Id. In this case,
Appellant alleges that the Examiner has not shown that the claimed
“insert[ing] during de-externalization a replaced static element reference in
the subject document within a comment tag in proximity to a corresponding
static element in the subject document” is capable of such instant and
unquestionable demonstration as to defy dispute. Id. at 4-5.
Appellant relies upon the same argument presented for the
obviousness rejection of dependent claim 4 to rebut the obviousness
rejection of dependent claims 9 and 14. See App. Br. 6-9; Reply Br. 1-5.

II. ISSUE
Has the Examiner erred in concluding that the combination of Zhou
and Bustelo renders dependent claims 4, 9, and 14 unpatentable? In
particular, the issues turns on whether the combination of Zhou, Bustelo, and
the Examiner’s finding of Official Notice collectively teaches “insert[ing]
during de-externalization a replaced static element reference in the subject
document within a comment tag in proximity to a corresponding static
element in the subject document[,]” as recited in dependent claim 4, and
similarly recited in dependent claims 9 and 14.

Appeal 2011-006090
Application 11/266,990

5
III. ANALYSIS
Claims 1-3, 5-8, 10-13, and 15
Because Appellant does not present any arguments with respect to
the Examiner’s rejection of independent claims 1, 6, and 11, and dependent
claims 2, 3, 5, 7, 8, 10, 12, 13, and 15, as being unpatentable under
35 U.S.C. § 103(a), we summarily sustain the obviousness rejection of these
claims.
2

Claims 4, 9, and 14
Based on the record before us, we do not discern error in the
Examiner’s finding of Official Notice with respect to dependent claim 4,
which recites, “insert[ing] during de-externalization a replaced static element
reference in the subject document within a comment tag in proximity to a
corresponding static element in the subject document.” We also do not
discern error in the Examiner’s finding of Official Notice with respect to
dependent claims 9 and 14, which recite a similar claim limitation.
Our reviewing court has held that an adequate traverse to an
Examiner’s finding of Official Notice must “contain adequate information or
argument” to create on its face “a reasonable doubt regarding the
circumstances justifying the … notice” of what is well known to an
ordinarily skilled artisan. In re Boon, 439 F.2d 724, 728 (CCPA 1971). “To
adequately traverse such a finding [of Official Notice], an applicant must
specifically point out the supposed errors in the [E]xaminer’s action, which
would include stating why the noticed fact is not considered to be common

2
See Manual of Patent Examining Procedure (“MPEP”) § 1205.02, 8th ed.,
Rev. 8, July 2010 (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, that ground of rejection will be summarily
sustained by the Board.”).
Appeal 2011-006090
Application 11/266,990

6
knowledge or well-known in the art.” MPEP § 2144.03(C). See also
37 CFR 1.111(b); In re Chevenard, 139 F.2d 711, 713 (CCPA 1943). “If
applicant does not traverse the [E]xaminer’s assertion of [O]fficial [N]otice
or applicant’s traverse is not adequate, … the common knowledge or well-
known in the art statement is taken to be admitted prior art ….” MPEP
§ 2144.03(C).
In this case, Appellant’s assertion does not contain information or
argument to create on its face, a reasonable doubt regarding the
circumstances justifying the Examiner’s finding of Official Notice. That is,
Appellant’s assertion does not explain why the noticed fact—namely
inserting comment tags into a document—is not considered to be common
knowledge or well-known in the art. As a result, we find that Appellant’s
traversal of the Examiner’s finding of Official Notice to be inadequate.
Nonetheless, the Examiner provides documentary evidence in the
Answer to support the finding of Official Notice. In particular, Fog Creek
discloses inserting old code (i.e., code that is replaced) into a comment tag
and leaving the comment tag in the applicable file. See, e.g., pg. 2 (posting
by Ori Berger). Appellant does not dispute the content of Fog Creek. As
such, we find that Fog Creek supports the Examiner’s finding of Official
Notice with respect to dependent claims 4, 9, and 14. Moreover, given the
limited number of places to insert Fog Creek’s comment tag containing old
code into the file, and that one with ordinary skill possesses ordinary
creativity and is not an automaton, KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007), we conclude that it would have been within the technical
grasp of one with ordinarily skill in the art to insert the comment tag in close
proximity to the corresponding replacement code in the file. Further, we
Appeal 2011-006090
Application 11/266,990

7
note that the Examiner relies upon Zhou’s disclosure of producing a desired
document by inserting local-specific content from a resource bundle
manager into a local-independent document core (¶ [100]) to teach the
claimed “de-externalization” process. See Ans. 9-10. Therefore, we find
that the Examiner has presented sufficient evidence to warrant that Zhou, in
combination with the Examiner’s finding of Official notice, collectively
teaches the disputed claim limitation. It follows that the Examiner has not
erred in concluding that the combination of Zhou and Bustelo renders
dependent claims 4, 9, and 14 unpatentable.

IV. CONCLUSION
For the foregoing reasons, the Examiner has not erred in rejecting
claims 1-15 as being unpatentable under 35 U.S.C. § 103(a).

V. DECISION
We affirm the Examiner’s decision to reject claims 1-15.
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).

AFFIRMED

ak