Ex Parte Clark

Patent Trial and Appeal Board

Sep 25, 2012

10996254 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID ALBERT CLARK
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Appeal 2010-004418
Application 10/996,254
Technology Center 2100
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Before MAHSHID D. SAADAT, ERIC S. FRAHM,
and MICHAEL J. STRAUSS, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-7, and 9-20. Claims 2 and 8 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2010-004418
Application 10/996,254

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STATEMENT OF THE CASE
Appellant’s invention relates to a method for performing a partial
“undo” action affecting a single object whose state was modified in a group
editing action wherein multiple objects are operated on as a group (Spec. ¶¶
[0001] - [0003] and [0014]).
Independent claim 1 is illustrative of the invention and reads as
follows:
1. A method of operating a computer system for
restoring, to a previous state, a single object whose state was
modified in a group editing action wherein a plurality of
objects, including the single object, were modified as a group,
the method comprising:
storing, prior to execution of the group editing action,
initial restorative information necessary to restore each of the
plurality of objects to its state prior to being modified by the
group editing action;
storing, after execution of the group editing action, group
edit restorative information indicating the state, after the
execution of the group editing action, of each of the objects that
were modified by the group editing action; and
restoring the single object to said previous state in
accordance with the group edit restorative information
corresponding to the single object, in response to an indication
that one of the plurality of objects is to be restored to said
previous state.

The Examiner rejected claims 1, 3-7, and 9-20 under 35 U.S.C.
§ 102(b) as anticipated by Bates (US 6,108,668).
1

1
The Examiner indicated on page 3 of the Examiner’s Answer that the
35 U.S.C. § 112, second paragraph, rejection of claims 7, 9, and 10 has been
withdrawn.
Appeal 2010-004418
Application 10/996,254

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ISSUE
Did the Examiner err in rejecting the claims as anticipated by Bates
because the reference fails to disclose the claimed step for restoring a single
object modified in a group editing action to a previous state, in response to
an indication to restore one of the objects, as recited in claim 1?

ANALYSIS
The Examiner takes the position that Bates discloses a series of edits
or changes made to an electronic document shown in Figure 1 that meets the
storing steps of claim 1 (Ans. 4). By further relying on Bates’ disclosure in
columns 3-6, the Examiner finds that the sequential list of edits or the undo
list in Bates, which includes previous edits, is used to undo the previous
editing operations (Ans. 4 and 8). The Examiner characterizes a section or
paragraph as the claimed single object and equates the editing performed on
a sentence as the “group edit action” because “a sentence includes a group of
words” (Ans. 10).
Appellant contends that Bates merely discloses selectively undoing
previous edits performed on a selected particular portion of the document
rather than group editing recited in claim 1 (App. Br. 13). Appellant further
points out that Bates discloses performing the chain of previous edits in a
sequence, which indicates that the sequential edits were not performed
concurrently as required by the claimed “group editing action” (id.). With
respect to the Examiner’s position (Ans. 10) that the group edit action is the
operation performed on sentences in a paragraph of Bates, Appellant argues
that Bates’ editing actions are not performed “on a plurality of objects,
where the objects are ‘modified as a group’” (Reply Br. 7).
Appeal 2010-004418
Application 10/996,254

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We agree with Appellant (Reply Br. 9) that Bates does not disclose
modifying the state of any objects in a “group editing action,” as recited in
claim 1. The relied-on portions of Bates in columns 3 and 4 describe a
series of sequential edits denoted as c1, c2, c3, . . . , c13 which are used as an
“undo chain” to undo the edit in any specific region of the document (col. 3,
l. 62 – col. 4, l. 7). Bates further discloses that the user may identify a
region between markers in the document to undo the edits in that region (col.
4, ll. 24-46). In other words, Bates provides for a document editing system
that sequentially performs edits, but performs the undo operation for a
selected region of the document. That is, contrary to the Examiner’s
characterization of a section or paragraph as the claimed single object (Ans.
10), when Bates changes a whole paragraph, the changes to each word does
not constitute changes to each object because the state of each word is not
identified.

CONCLUSION
On the record before us, we find that the Examiner erred in rejecting
claim 1 because Bates does not disclose the disputed claim language.
Therefore, we do not sustain the 35 U.S.C. § 102 rejection of claim 1, of
independent claims 6, 7, 11, and 15 which include similar limitations
discussed above, or of claims 3-5, 9, 10, 12-14, and 16-19 dependent
therefrom.

Appeal 2010-004418
Application 10/996,254

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DECISION
The decision of the Examiner rejecting claims 1, 3-7, and 9-20 is
reversed.

REVERSED

ELD