Ex parte Williams

Board of Patent Appeals and Interferences

May 17, 1999

08173287 (B.P.A.I. May. 17, 1999)

Application for patent filed December 21, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MARVIN L. WILLIAMS

_____________
Appeal No. 96-3056
Application 08/173,2871
______________
ON BRIEF
_______________
Before JERRY SMITH, RUGGIERO, and GROSS, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-16, which constitute
all the claims in the application.
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Application No. 08/173,287
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The disclosed invention pertains to a method and
apparatus for selectively capturing information from a
multimedia presentation within a data processing system, and
designating a calendar event to be associated with the
captured information.
Representative claim 1 is reproduced as follows:
1. A method, performed in a data processing system, for
selectively capturing information from a multimedia
presentation within a data processing system, said data
processing system including a calendar, said method comprising
the computer implemented steps of:
selecting information from a multimedia presentation
within the data processing system;
designating a calendar event of a calendar within
the data processing system; and
associating said selected information to the
designated calendar event within the data processing system.
The examiner relies on the following reference:
Baber et al. (Baber) 5,323,314 June 21, 1994
(filed Dec. 31, 1991)
Claims 1-16 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by the disclosure of Baber.
Rather than repeat the arguments of appellant or the
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Application No. 08/173,287
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examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of anticipation relied upon by the examiner as
support for the rejection. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellant’s arguments set forth in the brief along with the
examiner’s rationale in support of the rejection and arguments
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the disclosure of Baber does not fully meet
the invention as recited in claims 1-16. Accordingly, we
reverse.
Appellant has indicated that for purposes of this
appeal the claims will stand or fall together in the following
three groups: Group I has claims 1, 5-8 and 12-14, Group II
has claims 2-4 and 9-11, and Group III has claims 15 and 16
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Application No. 08/173,287
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[brief, page 3]. Consistent with this indication appellant
has made no separate arguments with respect to any of the
claims within each group. Although the examiner asserts that
appellant’s arguments are not sufficient to warrant separate
patentability of the groups, we find appellant’s arguments on
pages 8-10 of the brief to
adequately support the request to have the groups of claims
considered separately for patentability within the
requirements of 37 CFR § 1.192.
Anticipation is established only when a single prior
art reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing
the recited functional limitations. RCA Corp. v. Applied
Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
With respect to independent claims 1 and 8, the
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Application No. 08/173,287
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examiner has indicated how he reads these claims on the
disclosure of Baber [answer, page 3]. Appellant argues that
Baber does not disclose the step of associating the selected
information to the designated calendar event. Appellant also
argues that Baber does not disclose the step of selecting
information from a multimedia presentation. Finally,
appellant argues that Baber does not designate a calendar
event, but rather, creates a calendar event. The examiner
disagrees with each of appellant’s arguments and argues that
appellant is interpreting the scope of the claimed invention
too narrowly.
We agree with the examiner that Baber discloses
selecting
information from a multimedia presentation [column 11, lines
4-8], and that in order to create a calendar event Baber must
first broadly designate a calendar event (such as date in
Baber’s Figures 2a and 2b). We do not agree with the
examiner, however, that the step or means of “associating said
selected information to the designated calendar event within
the data processing system” is disclosed by Baber.
On this point appellant argues that the information
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selected in Baber is associated with a desired attendee,
meeting site and/or element of equipment rather than being
associated with the designated calendar event [brief, pages 5-
6]. The examiner responds with the following position:
[I]t is clear that all the information
in the database and the display of
Baber et al. is associated with all of
the other information. The term
“associated with” has no particular
meaning in the art, and as such,
Examiner has given a logical,
reasonable, broad interpretation to
the term [answer, page 7].

Although we agree with the examiner that claim
language should be given its broadest reasonable
interpretation during the course of prosecution, we do not
agree that the associating step of claims 1 and 8 can be
interpreted as broadly as the examiner has interpreted it.
The idea that all information in a computer is “associated
with” all other information in the computer is not reasonable.
The step of associating one piece of information with (to)
another piece of information suggests that there is some
logical relationship or nexus between the two pieces of
information. We agree with appellant that the data selected
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in Baber, such as the display of subwindow 76, is associated
with the attendee, the meeting site and/or an element of
equipment rather than with the designated calendar event such
as date. In other words, any information selected in Baber
brings up a window that associates that information with
further information, but it does not associate the selected
information with a designated calendar event.
In summary, even though the scope of the invention as
recited in independent claims 1 and 8 is relatively broad, the
examiner’s broad interpretation of the associating step is
inconsistent with the logical meaning of that step and is not
disclosed within Baber in a manner necessary to support a
rejection under 35 U.S.C. § 102. Therefore, we do not sustain
the rejection of independent claims 1 and 8 as anticipated by
the disclosure of Baber. Since the remaining claims depend
from
either claim 1 or claim 8, we also do not sustain the
rejection of any of these claims as anticipated by the
disclosure of Baber.
The decision of the examiner rejecting claims 1-16 is
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reversed.
REVERSED
)
Jerry Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Joseph F. Ruggiero )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Anita Pellman Gross )
Administrative Patent Judge )
dm
IBM Corporation
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Appeal No. 96-3056
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