Ex Parte Rank et al

Board of Patent Appeals and Interferences

Dec 9, 2009

09774354 (B.P.A.I. Dec. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PAUL J. RANK and JOHN C. PAMPUCH
____________

Appeal 2008-004801
Application 09/774,3541
Technology Center 2100
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Decided: December 10, 2009
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Before JAMES D. THOMAS, JOHN C. MARTIN, and
CAROLYN D. THOMAS, Administrative Patent Judges.

C. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE

1 Application filed January 30, 2001. The real party in interest is Sun
Microsystems.
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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1-18, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants invented a method and a computer usable medium for
providing a spreadsheet program with formula support on small devices (like
PDAs) while minimizing the amount of memory space used by not only the
program, but also by the accompanying compiled code during transfer of
files from the desktop to the small devices. (Spec. 27, Abstract.)

B. ILLUSTRATIVE CLAIM
The appeal contains claims 1-18. Claims 1 and 10 are independent
claims. Claim 1 is illustrative:
1. A method in a data processing system for evaluating a
spreadsheet file comprising:
obtaining said spreadsheet file in a first format on a first
device;
converting said spreadsheet file to a second format
wherein said converting further comprises evaluating one or more
formulas associated with said spreadsheet file while converting said
spreadsheet file to said second format; and
transferring said spreadsheet file to a second device.

C. REFERENCES
The references relied upon by the Examiner as evidence in rejecting
the claims on appeal are as follows:
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Schlafly US 5,471,612 Nov. 28, 1995
Horie US 6,487,597 B1 Nov. 26, 2002
Pajakowski US 6,718,425 B1 Apr. 6, 2004

D. REJECTIONS
The Examiner entered the following rejections which are before us for
review:
(1) Claims 1-4 and 10-13 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Horie in view of Schlafly; and
(2) Claims 5-9 and 14-18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Horie in view of Schlafly and further in view of
Pajakowski.

II. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Schlafly
1. Schlafly discloses that “the spreadsheet engine 135 includes a
Formula Evaluator 136 of the present invention. The Formula Evaluator 136
processes the various formulas stored in a spreadsheet during spreadsheet
recalculation.” (Col. 7, ll. 34-37.)
2. In Schlafly, “formulas are compiled to machine code upon the first
recalculation operation, typically when a spreadsheet is first loaded.” (Col.
16, ll. 31-33.)
3. Schlafly discloses that “[t]he machine code is instead generated on-
the-fly, at the first recalculation opportunity, with all subsequent
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recalculation operations employing the in-memory compiled formulas to
greatly increase recalculation speed.” (Col. 16, ll. 52-56.)

III. PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellants have the burden of presenting a rebuttal to
the prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellants have the burden on appeal to the Board to demonstrate error in
the Examiner’s position. In re Kahn, 441 F.3d. 977, 985-986 (Fed. Cir.
2006).

IV. ANALYSIS
Grouping of Claims
In the Brief:
Appellants argue claims 1-18 as a group (App. Br. 4-8). For claims 2-
18, Appellants repeat the same argument made for claim 1. We will,
therefore, treat claims 2-18 as standing or falling with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590 (Fed. Cir.
1991).
The Obviousness Rejection
We now consider the Examiner’s rejection of the claims under
35 U.S.C. § 103(a).
Horie and Schlafly
Do Not Teach Evaluating While Converting
Appellants contend that “Schlafly indicates that formula evaluation is
performed after compilation or conversion. . . . Accordingly, Schlafly does
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not teach or suggest converting while evaluating.” (App. Br. 5.) Appellants
further contend that “nowhere does Horie suggest evaluating a formula
during a conversion. This subject matter is simply not addressed in Horie.”
(Reply Br. 6.)
The Examiner found that “Schlafly teaches evaluating one or more
formulas (e.g., The Formula Evaluator 136 processes the various formulas
stored in a spreadsheet during spreadsheet recalculation; col. 7; lines 34-
40).” (Ans. 5.)

Issue: Have Appellants shown that the Examiner erred in finding that
Schlafly discloses “evaluating one or more formulas associated with said
spreadsheet file while converting said spreadsheet file to said second
format”?

Here, the Examiner concedes that Horie does not specifically teach
“evaluating one or more formulas associated with the spreadsheet file while
converting” (Ans. 5), but instead relies upon Schlafly to disclose this
limitation. As such, we shall limit our discussion to the Examiner’s
interpretation of Schlafly.
The Examiner found that Schlafly uses a Formula Evaluator to
process formulas/spreadsheets similar to the claimed invention. We agree.
Specifically, Schlafly discloses that various formulas stored in a spreadsheet
are evaluated during spreadsheet recalculation (FF 1). Schlafly further
discloses that formulas are compiled (i.e., converted) to machine code upon
the first recalculation operation (FF 2-3). Furthermore, Schlafly’s Fig. 7
shows a runtime formula evaluation scheme with in-memory cell records for
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formula results flowing to compiled formula segments. In other words,
Schlafly discloses both evaluating formulas associated with a spreadsheet
file and converting formulas to machine code during the same process, i.e.,
the first recalculation. As such, Schlafly reasonably discloses evaluating
formulas while converting the formulas in the spreadsheet file. Thus, the
claimed “evaluating one or more formulas associated with said spreadsheet
file while converting said spreadsheet file to said second format” reads on
Schlafly’s above-noted Formula Evaluator functions.

There Is No Motivation To Combine
Appellants contend that “there is no motivation to combine the
references found within the references themselves.” (App. Br. 7.)
Appellants further contend that “Schlafly teaches away from the limitations
of claim 1. It is improper to combine references where the references teach
away from their combination.” (App. Br. 8.)
The Examiner found that “[i]t would have been obvious to a person of
ordinary skill in the art at the time the invention was made to modify the
teachings of Horie with Schlafly because Schlafly’s teaching would have
provided the enhanced capability for promoting the sharing of information
between the personal computer 10 and the personal digital assistant 13.”
(Ans. 6.)
Issue: Have Appellants shown that there is no motivation to combine
Horie and Schlafly and that Schlafly teaches away from evaluating formulas
while converting the formula?

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As noted supra, Schlafly discloses both evaluating and converting
formulas during a first recalculation process (FF 1-3). While we agree with
Appellants that Schlafly discloses an embodiment of performing a
conversion before evaluating formulas (i.e., in subsequent recalculation
operations)(see Schlafly, col. 16, ll. 52-56), the fact remains that Schlafly
also discloses performing conversion while evaluating formulas during a
first recalculation process. In other words, there is at least one instance in
Schlafly (e.g., during the first recalculation) where both functions are being
performed. Thus, Appellants’ argument that Schlafly teaches away from the
argued feature is unpersuasive.
Appellants further contend that “there is no motivation to combine the
references found within the references themselves.” (App. Br. 7.) We note
that an “analysis [of whether the subject matter of a claim would have been
obvious] need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006); see also DyStar Textilfarben GmbH &
Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir.
2006) (“The motivation need not be found in the references sought to be
combined, but may be found in any number of sources, including common
knowledge, the prior art as a whole, or the nature of the problem itself.”); In
re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (“Having established that this
knowledge was in the art, the examiner could then properly rely, as put forth
by the solicitor, on a conclusion of obviousness ‘from common knowledge
and common sense of the person of ordinary skill in the art without any
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specific hint or suggestion in a particular reference.”’); In re Hoeschele, 406
F.2d 1403, 1406-07 (CCPA 1969) (“[I]t is proper to take into account not
only specific teachings of the references but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom …”).
Here, the Examiner has found actual teachings in the prior art and has
provided a rationale for the combination. Further, the teachings suggest that
the combination involves the predictable use of prior art elements according
to their established functions. Accordingly, we find that the Examiner has
provided sufficient motivation for modifying Horie with the teachings of
Schlafly.
Thus, Appellants have not persuaded us of error in the Examiner’s
conclusion of obviousness for representative claim 1. Therefore, we affirm
the Examiner’s § 103 rejection of independent claim 1 and of claims 2-18,
which fall therewith.

V. CONCLUSION
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-18.
Thus, claims 1-18 are not patentable.

VI. DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejection of claims 1-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).
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AFFIRMED

erc

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