Ex Parte WALLAR II

Board of Patent Appeals and Interferences

Feb 22, 2010

09471429 (B.P.A.I. Feb. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DONALD E. WALLAR, II
____________________

Appeal 2008-0027141
Application 09/471,429
Technology Center 2100
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Decided: February 23, 2010
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and JAY P. LUCAS,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on December 23, 1999. The real party in interest is IBM Corp.
(App. Br. 2.)
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 7 and 10 through 29. Claims
8 and 9 have been canceled. (App. Br. 2.) We have jurisdiction under 35
U.S.C. § 6(b) (2008).
We reverse.

Appellant’s Invention
Appellant invented a method for composing a formatted message by
automatically inserting formatting tags into an unformatted message
received from a user. (Spec. 3, ll. 9-20.) As depicted in Figures 2, 3, and 7,
upon receiving the unformatted message including the user’s selections from
input text fields (62, 64, 66, 68, 70) and the desired output format (84) of the
message, a message creator program (86) automatically inserts tags in the
unformatted text to convert it into the formatted message as specified by the
user. (Spec. 8, ll. 4-17.)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method for composing a computer message, said
method comprising the steps of

(a) presenting a message composition area for entry of an
unformatted message into at least one text field and for entry of
data into at least one selection field associated with said text
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field, and a message format selector for selecting an output
format from a plurality of formats; and

(b) in response to entry of an unformatted message into
said message composition area and selection of one of said
output formats, converting said unformatted message to form a
formatted message from said text field with format tags,

wherein said formatted message is formatted according to
said one of said output formats, and

wherein format tags are assigned to said formatted
message and said formatted message is structured for display
based on a selection field data from said at least one associated
selection field.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Guck 5,911,776 Jun. 15, 1999
Ferrel 6,230,173 B1 May 8, 2001
Mertama 6,629,130 B2 Sep. 30, 2003

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1, 10, 15, 20 through 29 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Guck and
Mertama.
2. Claims 2 through 7, 11 through 14, and 16 through 19 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination Guck, Mertama and Ferrel.
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Appellant’s Contentions
Appellant contends that Guck does not teach converting an
unformatted message to form a formatted message with format tags, as
recited in independent claim 1. (App. Br. 16-19, Reply Br. 4-6.) According
to Appellant, while Guck discloses converting a source document or
message having a particular format into a different format to thereby make
the source document compatible with a receiving appliance, the source
document is nonetheless already formatted. It is not an unformatted
message, as required by the claim. (Id.)
Examiner’s Findings
The Examiner finds that Guck’s disclosure of a server converting a
document with a personal format into a different format suggests that the
personal format is unknown to the receiving application at the server. (Ans.
11.) Therefore, from the standpoint of the receiving application, the
personal format of the document meets the ordinary meaning of an
unformatted document. (Id.)

II. ISSUE
Has Appellant shown that the Examiner erred in finding that the
combination of Guck and Mertama teaches or suggests converting an
unformatted message into a formatted message, as recited in independent
claim 1?

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III. FINDING OF FACT
The following Finding of Fact (FF) is shown by a preponderance of
the evidence.
Guck
Guck discloses an interface that allows a server to automatically
convert a source file with a first format into another format that matches the
requirements a receiver’s appliance. (Abst.)

IV. PRINCIPLES OF LAW
Obviousness
“On appeal to the Board, an applicant can overcome a rejection [under
§ 103] by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.” In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998))
(citation omitted).

V. ANALYSIS
Independent claim 1 requires, in relevant part, converting an
unformatted message into a formatted message. As set forth in the Finding
of Fact section, supra., Guck discloses converting the format of a source
message into an equivalent second format of the message to thereby make it
compliant with a receiver’s appliance. We find that such conversion of the
message format simply amounts to reformatting the existing format of the
message. Further, we do not agree with the Examiner that the personal
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format of the received message is unknown to the receiving application at
the server. We find that in order for the receiving application to convert the
personal format of a source document into the compliant format of the
receiver’s appliance, it must first identify the personal format of the source
document. We also find that such identification of the personal format
requires the server to have some prior knowledge or familiarity therewith.
Consequently, to somehow find that Guck’s conversion a document with a
first format into a second format suggests or teaches converting an
unformatted document into a formatted document would require us to
unreasonably stretch the teachings thereof.
Additionally, we agree with Appellant that Mertama does not cure the
deficiencies of Guck. (App. Br. 19-21.) Since Appellant has shown at least
one error in the rejection of claim 1, we need not reach the merits of
Appellant’s other arguments. It follows that Appellant has shown that the
Examiner erred in concluding that the combination of Guck and Mertama
renders independent claim 1 unpatentable.
Because claims 2 through 7 and 10 through 29 also recite the
limitations discussed above, we find that Appellant has also shown error in
the Examiner’s rejection of these claims for the reasons set forth in our
discussion of independent claim 1. It therefore follows that Appellant has
shown that the Examiner erred in concluding that the combination of Guck
and Mertama renders these claims unpatentable.

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VI. CONCLUSION OF LAW
Appellant has established that the Examiner erred in rejecting claims 1
through 7 and 10 through 29 as unpatentable under 35 U.S.C. § 103(a).

VII. DECISION
We reverse the Examiner's rejection of claims 1 through 7 and 10
through 29.

REVERSED

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