Ex Parte Milton et al

Patent Trial and Appeal BoardAug 19, 2014

11654822 (P.T.A.B. Aug. 19, 2014)

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. 11/654,822 01/18/2007 Harold W. Milton JR. 35322-00002 8460 59582 7590 08/20/2014 DICKINSON WRIGHT PLLC 2600 WEST BIG BEAVER ROAD SUITE 300 TROY, MI 48084-3312 EXAMINER TSUI, WILSON W ART UNIT PAPER NUMBER 2178 MAIL DATE DELIVERY MODE 08/20/2014 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 HAROLD W. MILTON JR. and JACOB ALLEN ____________ Appeal 2012-001393 Application 11/654,822 Technology Center 2100 ____________ Before ST JOHN COURTENAY III, CAROLYN D. THOMAS, and JEFFREY S. SMITH, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner finally rejecting claims 1–7, all the claims pending in the application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The present invention relates generally to preparing a patent application by running a software macro to display dependency tree with the ability to insert word or phrases within the tree. See Abstract. Appeal 2012-001393 Application 11/654,822 2 Claim 1 is illustrative: 1. A method of preparing a patent application including independent and dependent claims comprising the steps of; presenting a Claim Numbering data block (24) in a word processing program, presenting a Number Claims text block (28) in the Claim Numbering data block (24) and an OK option, presenting the claim numbers (26) in the Number Claims text block (28) in a tabulation (30), selecting one of the claim numbers (26) in the tabulation (30), presenting a Claim Number text block (40) in the Claim Numbering data block (24) and presenting the text of one of the claims in response to selecting one of the claim numbers (26), and characterized by presenting a Claim Note data line (38) in the Claim Numbering data block (24) for receiving claim notes (42), and entering claim notes (42) in the Claim Note data line (38) for summarizing in a single word or phrase the claim limitations of the claim presented in the Claim Number text block (40), and selecting the OK option in the Claim Numbering data block (24), and displaying the claim notes (42) in the tabulation (30) adjacent the selected claim number (26) in response to selecting the OK option while presenting the text of one of the claims in the Claim Number text block (40), and storing independently of the claims the claim notes (42) in the tabulation (30) adjacent the claim numbers (26). Appellants appeal the following rejections: R1. Claims 1-3 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tran (US 2001/0049707 A1, Dec. 6, 2001) and Rivette (US 5,806,079, Sept. 8, 1998); R2. Claims 4 and 7 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tran, Rivette, and Jones (US 2004/0172584 A1, Sept. 2, Appeal 2012-001393 Application 11/654,822 3 2004); and R3. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tran, Rivette, Jones, and Coulson (US 2005/0262481 A1, Nov. 24, 2005). Claim Groupings Based on Appellants’ arguments in the Appeal Brief, we will decide the appeal on the basis of claim 1, as set forth below. See 37 C.F.R. 41.37(c)(1)(vii). ANALYSIS Issue: Did the Examiner err in finding that the combined teachings of Tran and Rivette teaches and/or suggest displaying claim notes in a tabulation adjacent the selected claim number, as set forth in claim 1? We refer to, rely on, and adopt the Examiner's findings and conclusions set forth in the Answer. Our discussions here will be limited to the following points of emphasis. Appellants contend that “[w]hile Rivette ʼ079 generally teaches adding notes to a document summarizing portions of selected text, Rivette ʼ079 fails to disclose the limitation of presenting a Claim Note data line (38) and displaying claim notes (42) in the tabulation (30) adjacent the claim numbers (26)” (App. Br. 7). Appellants further contend that “neither reference presents a Claim Note data line (38) displaying claim notes (42) in the tabulation (30) adjacent the claim number (26) which are stored separately and independently of the claims” (id.). Appeal 2012-001393 Application 11/654,822 4 The Examiner finds that Tran is used in combination with Rivette which discloses that “notes can be placed/associated with a plurality of data objects, including within a tabulated/table data objects area” (see Ans. 23). We agree with the Examiner. For example, Tran discloses a document drafting system that generates a document having a required sequence (see Abstract). In Tran, the user can enter notes (see ¶ 51) and a graphical user interface illustrates a numbered claim tree (see ¶61; see also Fig. 3B). In other words, Tran discloses a tabulation of claim numbers and the ability to enter notes, i.e., a claim note data line. Similarly, Rivette discloses a method for manipulating notes linked to data objects (see Abstract). In Rivette, the notes include a description of the contents of the data objects (see col. 2, ll. 42–46) and the object field includes information that describes the object containing the selected text that the corresponding sub-note is linked to (see col. 15, ll. 27– 30; see also Fig. 7B). In other words, Rivette’s notes are located/displayed near data objects in a tabulated form. Therefore, the combined teachings of Tran and Rivette teaches and/or suggests notes being located/associated with objects, such as claim numbers, in a tabulated configuration. For at least these reasons, we are not persuaded the Examiner erred in finding that the combined teachings of Tran and Rivette discloses the argued limitations as recited in independent claim 1 and in commensurately recited independent claims 5 and 7, not separately argued. Therefore, the Examiner did not err in rejecting claims 1–7 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s § 103 rejections of claims 1–7. Appeal 2012-001393 Application 11/654,822 5 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 kme