Ex Parte Atkin

Patent Trial and Appeal BoardAug 13, 2014

11463131 (P.T.A.B. Aug. 13, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/463,131 08/08/2006 Steven Edward Atkin AUS920010277US2 6438 45993 7590 08/14/2014 IBM CORPORATION (RHF) C/O ROBERT H. FRANTZ P. O. BOX 23324 OKLAHOMA CITY, OK 73123 EXAMINER HUYNH, THU V ART UNIT PAPER NUMBER 2177 MAIL DATE DELIVERY MODE 08/14/2014 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 STEVEN EDWARD ATKIN ____________ Appeal 2011-012839 Application 11/463,131 Technology Center 2100 ____________ Before JOSEPH F. RUGGIERO, JEAN R. HOMERE, and DANIEL N. FISHMAN, Administrative Patent Judges. RUGGIERO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1–30, all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. . Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed Mar. 9, 2011), the Answer (mailed May 24, 2011), and the Reply Brief (filed July 25, 2011). Only those arguments actually made by Appellant have been considered in this Decision. Arguments which Appellant could have made but chose not to make in the Appeal 2011-012839 Application 11/463,131 2 Briefs have not been considered and are deemed to be waived (see 37 C.F.R. § 41.37(c)(1)(vii)). Appellant’s Invention Appellant’s invention relates to handling and presenting bi- directional, multi-language text requiring orientation from left-to-right and right-to-left to support various international character sets and languages. See generally Spec. ¶ 1. Claim 1 is illustrative of the invention and reads as follows: 1. A computer-implemented method comprising: assigning by a computer platform bidirectional attributes to a logical character stream; assigning by a computer platform initial level numbers while honoring any directional overrides by explicit processing; changing by a computer platform attribute types based upon surrounding attribute types through weak and neutral processing; associating by a computer platform final level numbers to the logical character stream through implicit processing; and reordering by a computer platform characters within the logical character stream into display order according to the final level numbers by separately handling facets of layout relating to character reordering and facets related to character stream rendering. The Examiner’s Rejections The Examiner relies on the following prior art references to show unpatentability: Eichel US 2002/0030689 A1 Mar. 14, 2002 Chokshi US 7,366,977 B2 Apr. 29, 2008 (eff. filed Aug. 2, 2002) Appeal 2011-012839 Application 11/463,131 3 Mark Davis (hereinafter “Davis”), The Bidirectional Algorithm, http://www.unicode.org/reports/tr9/tr9-6.html, published 11/11/1999, pages 1-21. Steven Atkin and Ryan Stansifer (hereinafter “Atkin-Stansifer”), Implementation of Bidirectional Reordering Algorithms, https://cs.fit.edu/Projects/tech_reports/cs-2000-1.pdf from web page https://cs.fit.edu/Projects/tech_reports/tr2000.html, published 10/04/2000, pages 1-14. Claims 1–3, 11–13, and 21–24 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Davis. Claims 4, 14, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Davis. Claims 5–10, 15–20, and 25–30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Davis in view of Eichel. Claims 5–10, 15–20, and 25–30 also stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Davis in view of Chokshi. Claims 1–5, 11–14, and 21–25 stand rejected under 35 U.S.C. § 102(a) as being anticipated by Stansifer. Claims 6–10, 16–20, and 26–30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stansifer in view of Eichel. ANALYSIS I. THE REJECTIONS BASED ON DAVIS 35 U.S.C. § 102(b) Appellant argues, with respect to rejected claims 1–3, 11–13, and 21– 24, that Davis does not teach the solution to the problems discovered by the inventor in existing bidirectional text display algorithms. According to Appellant, the implementation of the process of Davis would result in the Appeal 2011-012839 Application 11/463,131 4 failure “to correctly order and display character streams under certain, specific situations and combinations of characters and codes.” App. Br. 12. Appellant’s argument is not persuasive. The contention that an applied prior art reference does not solve problems allegedly discovered by Appellant is not relevant to a rejection based on anticipation. Appellant’s arguments do not demonstrate error in the Examiner’s detailed analysis and mapping of the disclosure of Davis to the features of the rejected claims. Ans. 4. Accordingly, the Examiner’s 35 U.S.C. § 102(b) rejection of claims 1–3, 11–13, and 21–24 is sustained. 35 U.S.C. § 103(a) REJECTIONS We also sustain the Examiner’s obviousness rejection of dependent claims 4–10, 14–20, and 24–30 in which the Eichel and Chokshi references have been applied in separate combinations with Davis. Appellant contends that, in contrast to the claimed separation of character reordering and rendering phases, Davis teaches a line-base processing approach which is explicitly distinguished from resolution phases. App. Br. 14 (citing Davis, pg. 18, ll. 3-4).1 Appellant’s arguments are not persuasive. As pointed out by the Examiner, there is no claim language that requires processing “phases.” Ans. 15. Instead, the claim language is directed to the separate handling of “facets” related to character reordering and “facets” related to rendering. Appellant has clarified the intended construction of “facets” as being 1 The passages from Davis referenced by Appellant appears at page 16, lines 1-3 of the 6.0 version of Davis (published Nov. 11, 1999), the version used by the Examiner in the stated rejection. Appeal 2011-012839 Application 11/463,131 5 equivalent to “phases,” and has provided a relevant dictionary definition of “phase” in the claimed context as meaning “aspect.”2 Reply Br. 3–4. While Appellant directs attention (App. Br. 14) to Davis’s characterization of the bi-directional process as “line-based,” we find no error in the Examiner’s determination that Davis teaches the separate handling of the facets, i.e., aspects, related to character reordering and the facets related to character stream rendering. Ans. 16, (citing Davis, page 16). II. THE REJECTIONS BASED ON ATKIN-STANSIFER We do not sustain the Examiner’s 35 U.S.C. § 102(a) rejection of claims 1–5, 11–14, and 21–25 based on Atkin-Stansifer, nor the 35 U.S.C. § 103(a) rejection of claims 6–10, 15–20, and 26–30 based on the combination of Atkin-Stansifer and Eichel. Appellant filed an affidavit filed July 19, 2010, that addresses two issues— i) conception before the October 4, 2000 publication date of the Atkin-Stansifer reference and ii) the Atkin- Stansifer reference does not qualify as prior art because it is solely the inventor’s own work. As to the first issue of conception before the October 4, 2000 date, the Examiner has taken the position that the “print out of UniParser.java” submitted as an appendix to the July 19, 2010 affidavit does not support the assigning, changing, associating, and reordering limitations of independent claims 1, 11, and 21. Ans. 14. Appellant has not challenged the Examiner’s stated position on the merits. While Appellant contends the Examiner’s position is a new argument raised for the first time after appeal, Appellant 2 “aspect; phase,” (emphasis in original), Random House Webster’s Unabridged Dictionary, 2nd ed., 2001, pg. 690. Appeal 2011-012839 Application 11/463,131 6 had an opportunity to address the issue on the merits in the Reply Brief, but did not do so. Reply Br. 2–3. As to the second issue, however, we agree with Appellant that the affidavit filed July 19, 2010, by Steven Edward Atkin, the inventor of the instant application, is sufficient to establish that the Atkin-Stansifer reference does not qualify as prior art because it is solely the inventor’s own work.3 The Examiner has not challenged the statements in the affidavit indicating that the Atkin-Stansifer reference is the inventor’s own work. Ans. 13–14. It has been held that an affidavit by an applicant alone indicating that applicant is the sole inventor and others were working under his direction is sufficient to remove the publication as a reference. See In re Katz, 687 F.2d 450, 453 (CCPA 1982) and MPEP § 715.01(c). CONCLUSION Based on the analysis above, we conclude that the Examiner erred in rejecting, based on Atkin-Stansifer, the appealed claims for anticipation under 35 U.S.C. § 102(a) and obviousness under 35 U.S.C. § 103(a). We also conclude the Examiner did not err in rejecting the appealed claims, based on Davis, for anticipation under 35 U.S.C. § 102(b) and obviousness under 35 U.S.C. § 103(a). 3 The July 19, 2010 affidavit is a copy of the affidavit filed in parent application SN 09/838,377, and a statement of record has been included indicating an intent to have the affidavit copy considered in the instant continuation application. See MPEP ¶ 201.06(c) IX. Appeal 2011-012839 Application 11/463,131 7 DECISION Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision rejecting claims 1– 30 is affirmed. See 37 C.F.R. § 41.50(a)(1). 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 rwk