Ex Parte Miller

Patent Trial and Appeal BoardMar 30, 2017

12545407 (P.T.A.B. Mar. 30, 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. 12/545,407 08/21/2009 Steven M. Miller RSW920080385US1 (765) 1276 46320 7590 CRGO LAW STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, EL 33434 EXAMINER LOWENBERGER, AARON J ART UNIT PAPER NUMBER 2173 NOTIFICATION DATE DELIVERY MODE 04/03/2017 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): docketing@crgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN M. MILLER Appeal 2016-000129 Application 12/545,407 Technology Center 2100 Before DEBRA K. STEPHENS, MICHAEL M. BARRY, and AARON W. MOORE, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant asserts we have overlooked or misapprehended the core arguments of the Appeal Brief and Reply Brief (Req. for Reh’g 2—5). According to Appellant, the Board misapprehended Hahn’s teaching of copying to a clipboard content already in multiple formats, where “Appellants have argued the importance of formatting an object once in the clipboard into multiple different target formats” (id. at 4). Appellant contends if content has been formatted prior to entry into the clipboard, the content would not need to be formatted when in the clipboard (id.). Thus, Appellant has requested reconsideration of our Decision on Appeal. We are not persuaded we misapprehended Appellant’s arguments. As stated in our Decision, Appellant’s arguments are directed at Hahn Appeal 2016-000129 Application 12/545,407 individually, while the Examiner is relying on the combination of Hahn and Stuple for teaching the disputed limitation “formatting the object in the clipboard in each of the target formats” (Dec. 4 (citing Final Act. 4)). We further stated “Appellant has not addressed the combination of teachings of Hahn and Stuple relied upon by the Examiner and, thus, Appellant has not persuaded us the Examiner’s finding are in error” {id.). Specifically, the Examiner stated Hahn teaches having data in a clipboard in multiple formats (see paragraph 0023 and 0031). Though Hahn does not explicitly teach that this formatting occurs for an object already in the clipboard, it would be obvious, when combined with Stuple, to format the objects already in the clipboard in the multiple formats determined by Stuple for the objects already in the clipboard. (Ans. 4—5). Our findings with respect to Hahn stated “we agree with the Examiner’s findings that Hahn teaches data content is copied to the clipboard in multiple formats (Hahn || 23, 26, 31)” and “Hahn teaches the data may be rendered in multiple formats” (Dec. 4—5). We further stated Appellant had not persuaded us the Examiner’s finding “Hahn’s teachings, combined with Stuple’s teaching of determining target formats for objects already in the clipboard, teach or at least suggest ‘formatting the object in the clipboard in each of the target formats,’ as recited in claim 15” was in error (Dec. 5). Thus, as we found in our Decision, Appellant’s argument that Hahn does not disclose “formatting an object in the clipboard” is not persuasive because the Examiner relies on the combination of Stuple and Hahn for teaching the disputed limitation and Appellant has not addressed the combination (Dec. 5). Indeed, Appellant did not address the combination of teachings. 2 Appeal 2016-000129 Application 12/545,407 Therefore, we find Appellant’s arguments that we misapprehended or overlooked arguments for claim 15 unpersuasive. DECISION Accordingly, we have granted Appellants’ Request to the extent that we have reconsidered the original Decision but have denied it with respect to making any modifications to the Decision. REHEARING DENIED 3