Ex Parte Forlenza et al

Patent Trial and Appeal Board

Mar 25, 2013

11034549 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RANDOLPH MICHAEL FORLENZA and
JOHN PAUL KAEMMERER
____________________

Appeal 2010-011224
Application 11/034,549
Technology Center 2100
____________________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011224
Application 11/034,549

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-11 and 13-21. Claim 12 has been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.
INVENTION
Appellants’ claimed invention is generally related to computer
systems, and in particular to a method and system for selecting files to be
sent to an application on a computer system. (Spec. 1).
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. In a data processing system, a method comprising:

selecting a first file from within a file directory;

when a first function is activated while the first file is
selected, associating the first file with a first queue, wherein the
first function is selected for activation from a list of available
functions that may be selectively applied to selected files within
the file directory;

subsequently selecting, by action of a user, a second file
from within the file directory;

when a second function is activated while the second file
is selected and the first file is within the first queue,
automatically sending said second file and said first file to an
application, wherein the application concurrently imports and
opens both the first file placed within the first queue and the
second file subsequently selected for use by the data processing
system.

Appeal 2010-011224
Application 11/034,549

3
REFERENCES
Sharma US Patent No. 5,577,041 Nov. 19, 1996
Scian US Pat. App. Pub. No. 2006/0026236 A1 Feb. 2, 2006
Young US Pat. App. Pub. No. 2006/0168312 A1 Jul. 27, 2006

REJECTIONS
Claims 1-6, 10, 11, and 13-21 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Young.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young and Scian.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young and Sharma.

ANALYSIS
ANTICIPATION
Claims 1-6, 10, 11, 13, and 14
With respect to independent claims 1 and 10, Appellants present
separate arguments for patentability of these claims which have similar
limitations. (App. Br. 6-8). Appellants contend that the Young reference
teaches pre-queuing of files predicted to be desired by a user. (App. Br. 6).
Appellants contend that:

Appellants' claimed invention, in contrast involves (among
other features): (1) providing a selectable function to place a
selected file within a queue, where only selected files are
queued, and files from different folders may be queued, and (2)
selecting an application with which to open the queued and
selected files, following the selective queuing of the files, and
(3) providing a second selectable function to automatically open
Appeal 2010-011224
Application 11/034,549

4
all the queued and/or selected files with the application, where
files across different folders can be opened with a single
operation (paraphrasing the above claim elements).

(App. Br. 7). The Examiner identifies only paragraphs [0021] and [0032] of
the Young reference and generally asserts that once selected and queued, the
files are automatically imported via a telecommunication link into the client
application and that the claimed "for use by the data processing system"
does not hold any patentable weight. (Ans. 15-16). We find the Examiner's
reliance upon these two paragraphs of the Young reference falls short of the
requisite showing for an anticipation rejection of the express sequence of
steps as recited in independent claim 1. The Examiner has not shown the
sequence of steps in independent claim 1 to be expressly or inherently
described in the limited portions of the Young reference relied upon by the
Examiner. To find otherwise would require us to speculate as to how the
Young reference meets the express sequence of steps as recited in
independent claim 1. We will not resort to such speculation or assumptions
to cure the deficiencies in the factual basis in order to support the
Examiner’s anticipation rejection. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967). Therefore, we cannot sustain the rejection of independent
claim 1 and dependent claims 2-6 based upon anticipation over the Young
reference.
With respect to independent claim 10, we find similar claim language
to that in independent claim 1, which the Examiner has not shown to be
expressly or inherently described in the limited portions of the Young
reference relied upon by the Examiner. To find otherwise would require us
to speculate as to how the Young reference meets the express sequence of
Appeal 2010-011224
Application 11/034,549

5
steps as recited in independent claim 10. Therefore, we cannot sustain the
rejection of independent claim 10 and dependent claims 11, 13, and 14 based
upon anticipation over the Young reference.
Claims 15-21
With respect to independent claim 18, Appellants have not presented
an argument for independent claim 18 in the Appeal Brief and therefore
have not set forth separate arguments for the patentability of this claim.
Therefore, we summarily sustain the Examiner's rejection of independent
claim 18 and its respective dependent claims 19-21. See Hyatt v. Dudas,
551 F.3d 1307, 1314 (Fed. Cir 2008) ("When the appellant fails to contest a
ground of rejection to the Board, section 1.192(c)(7) [(now section
41.37(c)(1)(iv))] imposes no burden on the Board to consider the merits of
that ground of rejection. . . . [T]he Board may treat any argument with
respect to that ground of rejection as waived.").
With respect to independent claim 15, Appellants identify claim 15
parenthetically in the heading at page 6 of the principal brief, but Appellants
do not address the express claim language for this claim. We find the
language of independent claim 15 to be different than that found in
independent claims 1 and 10. Appellants have not set forth a separate
argument for patentability of independent claim 15 and its respective
dependent claims 16 and 17. Therefore, we group these claims as falling
with independent claim 18.

Appeal 2010-011224
Application 11/034,549

6
OBVIOUSNESS
With respect to dependent claims 7-9, the Examiner has not identified
how the teachings of the Scian reference or the Sharma reference remedy the
noted deficiency in the anticipation rejection over the Young reference.
Therefore, we cannot sustain the obviousness rejection of dependent claims
7-9.

CONCLUSION
The Examiner did not err in rejecting claims 15-21 under 35 U.S.C.
§ 102. The Examiner erred in rejecting claims 1-6 and 10, 11, 13, and 14
under 35 U.S.C. § 102. The Examiner erred in rejecting claims 7-9 under 35
U.S.C. § 103.

DECISION
The Examiner's decision rejecting claims 15-21 under 35 U.S.C.
§ 102 is affirmed. The Examiner's decision rejecting claims 1-6 and 10, 11,
13, and 14 under 35 U.S.C. § 102 is reversed. The Examiner's decision
rejecting claims 7-9 under 35 U.S.C. § 103 is reversed.
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-IN-PART

Vsh/peb