Ex Parte James

Patent Trial and Appeal Board

Jan 28, 2019

13569843 (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/569,843 08/08/2012
149910 7590 01/30/2019
Berenzweig Leonard LLP
8300 Greensboro Drive, Suite 1250
McLean, VA 22102
FIRST NAMED INVENTOR
Fletcher James
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2500.4089 1274
EXAMINER
PATEL, MANGLESH M
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
01/30/2019 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):
cfindley@berenzweiglaw.com
rrasmus@berenzweiglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FLETCHER JAMES
Appeal2017-004708
Application 13/569,843
Technology Center 2100
Before JOSEPH L. DIXON, JOHN A. EV ANS, and SCOTT B. HOW ARD,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-004708
Application 13/569,843
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1, 6-13, 22, and 27-34. We have jurisdiction under 35 U.S.C. § 6(b ).
An oral hearing was scheduled for January 17, 2019, but Appellant waived
the oral hearing. Therefore, we decide the appeal on the Briefs.
We reverse.
The claims are directed to a method and system for persisting add-in
data in documents. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A system for adding functionality to a document-based
application comprising a computer with a processor and non-
transitory system memory storing executable instructions which,
when executed by the processor, further comprise:
a. an add-in module;
b. at least one rich item store for storing rich items; and
c. a data store for storing supplemental data elements
created by the add-in module within a document created by the
document-based application, where at least one supplemental
data element is associated with a content segment in the
document by a bookmark comprising a marked location of the
content segment in the document, at least one rich item is
associated with the at least one supplemental data element, the
data store and the at least one rich item store are stored within
the document as meta-data of the document, and each of the at
least one rich item stores comprises rich items whose type is one
of: text, image data, sound data, or binary data.
1 Appellant indicates that Fletcher James is the real party in interest. (App.
Br. 1).
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Application 13/569,843
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Levit and James, Best Authority User's Guide, Version 2.7 (2010)
("Levit").
REJECTIONS
The Examiner made the following rejections:
Claims 1, 6-13, and 27-34 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Levit (hereinafter Best Authority User's Guide).
We consider the obviousness rejection of independent claim 22 over
Chun in view of Coulson to be withdrawn from consideration. 2
2 The Examiner expressly only lists the anticipation rejection in the
Examiner's Answer, and the Examiner's Answer does not contain a
"WITHDRAWN REJECTIONS" section. In the Pre-Appeal Brief
Conference Request, Appellant includes an argument regarding independent
claim 22 and identifies that the Examiner does not address Appellant's
argument that "Coulson does not disclose loading deserialized data into at
least one rich item store object." (Pre-Appeal Brief Conference Request,
dated May 24, 2016, citing to the [Non-Final] Action of June 10, 2015
where the Examiner withdrew the obviousness rejection to all other claims).
Because the Examiner has not addressed Appellant's prior arguments and
has not repeated the rejection, we interpret the obviousness rejection to be
withdrawn, and we do not consider the merits thereof. Any rejection not
repeated and discussed in the answer may be taken by the Board as having
been withdrawn. Ex Parte Emm, 118 USPQ 180 (Bd. App. 1957).
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Application 13/569,843
ANALYSIS
With respect to independent claims 1 and 27, Appellant sets forth
arguments to both claims together. (App. Br. 12). 3 We address independent
claim 1 as the illustrative claim for the group.
"[A]nticipation is a question of fact." In re Hyatt, 211 F.3d 1367,
1371-72, (citing Bischoff v. Wethered, 76 U.S. 812, 814--15 (1869); In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)).
[U]nless a reference discloses within the four comers of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the
thing claimed and, thus, cannot anticipate under 35 U.S.C.
§ 102.
Net Moneyin, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
"Thus, it is not enough that the prior art reference discloses part of the
claimed invention, which an ordinary artisan might supplement to make the
whole, or that it includes multiple, distinct teachings that the artisan might
somehow combine to achieve the claimed invention." Id. (citation omitted).
Appellant argues that the Best Authority User's Guide does not enable
independent claims 1 and 27. (App. Br. 12). Appellant argues that the Best
3 We note that the language of independent claim 27 is similar yet different
than independent claim 1 and does not expressly recite the "add in unit" in
the method, but the steps are similar when read in context of the disclosed
invention. We leave it to the Examiner to further consider the lack of
antecedent basis for "the supplemental data element" in step c.
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Application 13/569,843
Authority User's Guide does not anticipate the data store of claims 1 or 27
under 35 U.S.C. § 102(b). (App. Br. 14).
The Examiner asserts that Best Authority User's Guide anticipates
claims 1 and 27 under 35 U.S.C. § 102(b) because it discloses "a data store
for storing supplemental data elements created by the add-in module ...
where at least one supplemental data element is associated with a content
segment in the document by a bookmark comprising a marked location of
the content segment in the document." (Final Act. 3).
Appellant argues that:
[T]he document dictionary may be capable of storing "words,
phrases, and phrase patterns to enable it to detect citations in a
document," nothing in Best Authority User's Guide describes an
add-in module that (1) associates supplemental data elements in
the document dictionary with a content segment in the document;
or (2) uses a bookmark to effectuate that association. The
Examiner's evidence is therefore insufficient to qualify as an
anticipatory reference.
(App. Br. 14) (footnote omitted). Appellant further contends "Best Authority
User's Guide Does Not Anticipate the Rich Item Store of Claims 1 or 27
Under 35 U.S.C. § 102(b)." (App. Br. 16).
The Examiner attempts to piece together various words and
disclosures from the Best Authority User's Guide to support the Examiner's
finding of anticipation. (Ans. 5-12). The Examiner makes specific findings
that the Best Authority User's Guide "discloses a rich item store as meta-
data stored within the document has formatted text in a Table of Authorities
(TOA)" (Ans. 2); "at least one rich item store are stored within the
document as meta-data of the document" (Ans. 3); "BAU teaches that the
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Application 13/569,843
citations, statues etc. discovered in the document including the BA settings
are managed with the BA add-on and stored' ... with the document.' (see
pg. 50 Fig[.] 31)." (Ans. 12).
The Examiner further finds that the Best Authority User's Guide is
add-on software that works with MICROSOFT WORD® and therefore
comprises "an add-in module." (Ans. 8). The Examiner further finds that
pages 3, 94, and 107 of the Best Authority User's Guide "teach that BA
stores everything including settings and entries with the document." (Ans.
9)(emphasis added).
Appellant contends:
First, the Examiner mistakenly equates the claimed "data
store" with an entire Word document. In the first sentence of his
reasoning ( the only sentence where the Examiner attempts to
identify a data store in the prior art), he states, "[ t ]his section
[referring to Best Authority User's Guide at p. 63] teaches a data
store which is the document for storing supplemental data ... ").
This is wrong. A data store cannot be a document. Claim 1
states "the data store and the at least one rich item store are stored
within the document as meta-data of the document." This
difference between "data store" and "document" is also
supported by the specification, which explains "the data store
saves and retrieves data (including data associated with the rich
item store) to and from the designated storage areas in the
document. in ways that have minimal or no effect on the body of
that document. " Based on the claim language and the
specification, one of ordinary skill in the art would understand
that a data store must at least correspond to a storage area within
a document, and cannot refer to an entire document itself.
(Reply Br. 4) (footnotes omitted). Appellant further contends:
In the present application, because both the language of
the claims and the teaching of the specification narrow the scope
of the term "data store," and specifically by distinguishing a
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Application 13/569,843
"data store" from a "document," the Examiner may not apply a
"broadest-construction possible" rubric to this claim term.
It is therefore inappropriate for the Examiner to equate an
entire Word document with a data store. On the contrary, the
Examiner was required to cite prior art showing a defined data
storage area being utilized within a document. The prior art must
also show a data storage area implemented as meta-data, and the
data storage area must permit the storage of supplemental data
elements without significantly affecting the body of the
document. The examiner failed to satisfy these criteria, which is
not surprising given that Best Authority User's Guide is a user's
guide, not a software design document. Moreover, the only
evidence the Examiner offers to show the existence of a data
store in the prior art is the single statement cited above. He cites
no other evidence.
(Reply Br. 5) (footnote omitted). Finally, Appellant contends:
The Examiner continues his "data store" rejection by further
asserting that the related "supplemental data" limitation of claim
1 corresponds to "a Flag associated with a citation and
represented [ as J a bookmark having a marked location of the
citation segment in the document." This too is wrong because it
inappropriately equates supplemental data with a bookmark, as
if they are the same. Claim 1 makes it clear that supplemental
data and bookmark a re two different things. A legitimate prior
art reference must therefore teach this difference. Best Authority
User's Guide does not, and the Examiner's rejection must
therefore be reversed.
(Reply Br. 5-6).
We agree with the Appellant that the Examiner has not persuasively
shown that the Best Authority User's Guide discloses the invention as
recited in the language of independent claim 1.
We agree with Appellant that the Examiner's claim interpretation is
overly broad and not a reasonable interpretation. The language of
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Application 13/569,843
independent claims land 27 recite "system for adding functionality to a
document-based application" and "computer-implemented method for
adding functionality to a document-based application."
Although the Examiner has found respective words ("bookmark,"
"add in," "metadata") in the Best Authority User's Guide, the presence of
those words is not in the relative context as claimed in claims 1 and 27. The
Specification provides appropriate context for the claimed invention, and it
is clear that the claimed "add-in unit" provides additional functionality and
additionally provides the storage for the rich item store and the "data store."
(Spec. ,r 13 "The add-in includes at least two distinct sub-components: one
or more rich item stores and a data store. The rich item stores allow for the
in-memory storage and retrieval of identified items of data of types normally
used in the document based application (formatted text, spreadsheet cells,
graphics, etc.)"). (See also App. Br. 1-10).
With respect to independent claims 1 and 27, Appellant also argues
that the "Best Authority User's Guide states that citations are marked only
with custom fields or add-in fields, and the fact that the document never
mentions the use of bookmarks to perform this function, demands that it be
rejected as an anticipatory reference. Best Authority User's Guide describes
the old prior art method of building a Table of Authorities using embedded
fields." (App. Br. 18).
The Examiner finds that "BAU already teaches that all BA entries are
saved along with the document, he further discloses on pg. 63 "[t]he Flag is
a regular Word Bookmark. If you drop the Flag inside some text, and then
move that text to another part of the document, the Flag will move with it.
Therefore, if, you are going to move a citation to another TOA group .... "
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(Ans. lO)(emphasis omitted). The Examiner then explains what the section
"teaches" rather than relying upon what the sections expressly "discloses" as
required for an anticipation rejection. The Examiner further identifies pages
45 and 46 of Best Authority User's Guide regarding the use of Quick Mark
flag. (Id.).
We find the Examiner's showing to be insufficient to support the
Examiner's finding of anticipation, and the Examiner speculates as to how
the software uses the regular bookmarks of WORD® software.
As a result, we find that the Examiner has not made the requisite
showing that the Best Authority User's Guide discloses all the limitations as
set forth in independent claims 1 and 27 and their corresponding dependent
claims 6-13 and 28-34.
CONCLUSION
The Examiner erred in rejecting claims 1, 6-13, and 27-34 based
upon anticipation under 35 U.S.C. § 102.
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1, 6-13, and 27-34 based upon anticipation under 35 U.S.C. § 102.
REVERSED
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