Ex Parte Abi-Saleh

Patent Trial and Appeal Board

Jan 25, 2017

13402864 (P.T.A.B. Jan. 25, 2017)

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.
13/402,864 02/22/2012 HANNA FOUAD ABI-SALEH HASA-0001 8001
68612 7590 01/27/2017
LAW OFFICE OF STEVEN R. OLSEN, PLLC
P.O. BOX 2092
INVERNESS, FL 34451-2092
EXAMINER
KLICOS, NICHOLAS GEORGE
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
01/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
SOLSEN@sropatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANNA FOUAD
Appeal 2016-003645
Application 13/402,864
Technology Center 2100
Before CAROLYN D. THOMAS, JON M. JURGOVAN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 6 and 16—19, all the pending claims in
the present application. Claims 1—5, 7—15, and 20 are canceled. See Claim
Appendix (Appeal Brief, filed April 24, 2015). We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The present invention relates generally to a calculator that can be
configured by an end user. See Abstract.
Appeal 2016-003645
Application 13/402,864
Claims 6 and 16 are illustrative:
6. A calculator comprising:
a processor; and
a memory coupled to the processor, the memory
including:
a key superset having attributes associated with a
plurality of system-defined keys and at least one user-defined
key;
at least one user-defined keyset, the at least one
user-defined keyset including a subset of the key superset; and
a session memory configured to store attributes
associated with a plurality of calculator sessions, wherein each
of the plurality of calculator sessions is associated with the
evaluation of at least one expression, and wherein the attributes
associated with the plurality of calculator sessions include a
history of user inputs and calculator outputs for each of the
plurality of calculator sessions, wherein the session memory
includes:
a private session memory; and
a public session memory, the private session
memory being restricted to one of the plurality of calculator
sessions, the public session memory configured for access by
each of the plurality of calculator sessions.
16. A calculator comprising:
a processor; and
a memory coupled to the processor, the memory
including:
a key superset having attributes associated with a
plurality of system-defined keys and at least one user-defined
key;
at least one user-defined keyset, the at least one
user-defined keyset including a subset of the key superset; and
a session memory configured to store attributes
associated with a plurality of calculator sessions, wherein each
of the plurality of calculator sessions is associated with the
evaluation of at least one expression, and wherein the attributes
associated with the plurality of calculator sessions include a
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Application 13/402,864
history of user inputs and calculator outputs for each of the
plurality of calculator sessions, the calculator configured to
perform a process for defining the at least one user-defined key,
the process including:
receiving a key definition command;
determining whether a user has input a command
to import the at least one user-defined key;
if the user has input the command to import the at
least one user-defined key, importing the at least one user-
defined key separately from other attributes of the calculator;
if the user has not input the command to import the
at least one user-defined key,
displaying a plurality of key shape options;
receiving a key shape selection based on the
plurality of key shape options;
receiving a key size input;
displaying a plurality of key color options;
receiving a key color selection based on the
plurality of key color options;
determining whether the at least one user-defined
key is an information type or a process type;
if the at least one user-defined key is the
information type, receiving one of a value, a variable, an array,
or a set name;
if the at least one user-defined key is the process
type, receiving one of a system operation, a function, and a
macro; and
saving the at least one user-defined key.
Appellant appeals the following rejections:
Rl. Claims 16, 17, and 19 are rejected under 35 U.S.C. § 112 (pre-
AIA), first paragraph as failing to comply with the enablement requirement
(Ans. 2); and
R2. Claims 6 and 16—19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ryan Detzel (CustomCalc iPad App — Creating
your own calculator, https://vimeo.eom/10622822 (April, 1, 2010))
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Application 13/402,864
(“Detzel”) and Kearns (US 2004/0104945 Al, June 3, 2004) (Ans. 3).
ANALYSIS
Rejection of claims 16, 17, and 19
under § 112, first paragraph, enablement requirement
Issue 1: Did the Examiner err in finding that claim 16 fails to comply
with the enablement requirement?
Appellant contends that in Appellant’s Figure 6 “[s]tep 610 only
indicates that a key may be imported. There is no disclosure in the
[Specification that requires, or even suggests, that step 610 includes the
importation of any other calculator attribute(s)” (App. Br. 4) and similarly
“[s]tep 658 indicates that a key may be exported” (App. Br. 4).
The Examiner finds that Appellant “has amended claim 16 to recite an
importing . . . ‘separately from other attributes of the calculator’ . . . there is
no support in the [Specification for this amendment, or any indication that
his import/export can be done separately” (see Final Act. 2) and that “[i]f the
language is important, it should be in the [Specification and not assumed or
attempted to be derived from a Figure” (see Ans. 9).
When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by
the description of the invention provided in the specification of
the application.
In re Wright, 999 F.2d 1557, 1561—62 (Fed. Cir. 1993). However,
[t]he enablement requirement is often more indulgent than the
written description requirement. The specification need not
explicitly teach those in the art to make and use the invention;
the requirement is satisfied if, given what they already know,
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Application 13/402,864
the specification teaches those in the art enough that they can
make and use the invention without “undue experimentation.”
Amgen Inc., v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334 (Fed. Cir.
2003). Here, we find that Appellant’s Figure 6 teaches those in the art
enough so that they can import/export the key separately from other
attributes of the calculator without undue experimentation, as Appellant’s
Figure 6 broadly illustrates import/export of a key. We, accordingly, do not
sustain the § 112, first paragraph, rejection of independent claim 16, nor the
rejection of claims 17 and 19 for similar reasons.
Rejection of claim 6 under § 103(a)
Issue 2: Did the Examiner err in finding that Detzel teaches or
suggest a public memory configured for access by each of the plurality of
calculator sessions, as set forth in claim 6?
Appellant contends that “there is no disclosure in Detzel that any
calculator can access data that is stored with any other calculator session. . . .
The Kearns reference does not make up for this shortcoming of Detzel”
(App. Br. 5).
In response, the Examiner finds that “Detzel shows that a user can
load/install multiple calculator instances” (Ans. 10). Even if we assume
arguendo (without deciding) that Detzel does indeed load/install multiple
calculator instances (as proffered by the Examiner), we do not find, and the
Examiner has not established, that such loaded instances are in a public
session memory configured for access by each of the plurality of calculator
sessions, as required by claim 6. Specifically, the Examiner’s response fails
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Application 13/402,864
to consider or explain the “public memory” or the “access” requirement in
claim 6 and how Detzel teaches the same.
We, accordingly, do not sustain the § 103(a) rejection of independent
claim 6.
Claims 16, 17, and 19
Issue 3: Did the Examiner err in finding that the combined teachings
of Kearns and Detzel teach and/or suggest importation of a user-defined key,
as set forth in claim 16?
Appellant contends that regarding the importation of a user-defined
key “Kearns teaches reuse of an expression (or a portion thereof). But
Kearns appears to be silent with regard to keys (a key being a feature that
can be used to input a variable or function into the calculator)” (App. Br. 6;
see also App. Br. 8—9).
In response, the Examiner finds that “[t]he combination of
Detzel/Keams would teach that a particular file relating to a calculator
instance can be exported and imported (Kearns), while customizable
portions of a calculator can be saved and loaded (Detzel)” (Ans. 11).
Here, the Examiner is relying on the combined teachings of Kearns
and Detzel to teach and/or suggest the argued limitation and not merely
Kearns. In other words, Appellant’s arguments do not take into account
what the collective teachings of the prior art would have suggested to one of
ordinary skill in the art and is therefore ineffective to rebut the Examiner’s
prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
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Application 13/402,864
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”) (Citations omitted). This reasoning is applicable here as
Appellant fails to explain why DetzeTs customizable calculator keys (see
Final Act. 4—5) are not combinable with the teaching of Kearns.
Accordingly, we sustain the Examiner’s rejection of claim 16.
Appellant’s contentions for dependent claims 17 and 19 are substantially
similar as those for claim 16 (see App. Br. 5—9). We, therefore, also sustain
the Examiner’s rejection of claims 17 and 19 for similar reasons.
Claim 18
Issue 4: Did the Examiner err in finding that the combined teachings
of Kearns and Detzel teach or suggest combining two or more of the at least
one user-defined keysets, as set forth in claim 18?
Appellant contends that “[a]t best, Detzel discloses a single keyset
having a single key (the ‘calculate’ key). The Examiner erred because there
is no teaching or suggestion in Detzel for ‘combining two or more of the at
least user-defined keysets’ as recited in claim 18” (App. Br. 8).
In response, the Examiner finds that “Kearns is clear that multiple
expressions can be grouped and saved and restored” (Ans. 12). Again, the
Examiner is relying on the combined teachings of Kearns and Detzel to
teach and/or suggest the argued limitation and not merely Detzel. Appellant
fails to explain why Kearns’ grouping of expressions does not add to the
teaching of Detzel.
Accordingly, we sustain the Examiner’s rejection of claim 18.
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Application 13/402,864
DECISION
We reverse the Examiner’s § 112, first paragraph, rejection of claims
16, 17, and 19.
We reverse the Examiner’s § 103(a) rejection of claim 6.
We affirm the Examiner’s § 103(a) rejection of claims 16—19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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