Ex Parte Pratt

Patent Trial and Appeal BoardSep 25, 2012

11266990 (P.T.A.B. Sep. 25, 2012)

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. 11/266,990 11/04/2005 Allan K. Pratt LOT920050109US1 (020) 1900 46321 7590 09/25/2012 CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER SWIFT, CHARLES M ART UNIT PAPER NUMBER 2196 MAIL DATE DELIVERY MODE 09/25/2012 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 ALLAN K. PRATT ____________ Appeal 2011-006090 Application 11/266,990 Technology Center 2100 ____________ Before JAMESON LEE, KEVIN F. TURNER, and MICHAEL R. ZECHER, Administrative Patent Judges. ZECHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006090 Application 11/266,990 2 I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-15. App. Br. 2. 1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellant’s Invention Appellants invented a system, method, and computer program product that generally relates to document editing and, in particular, to processing static elements referenced within a document and stored externally to the document. Spec. ¶ [0001]. Illustrative Claim 4. The system of claim 1, wherein the automated de- externalization and re-externalization processor comprises additional program code enabled to insert during de-externalization a replaced static element reference in the subject document within a comment tag in proximity to a corresponding static element in the subject document. Prior Art Relied Upon Zhou US 2002/0162093 A1 Oct. 31, 2002 Bustelo US 2006/0090154 A1 Apr. 27, 2006 (filed Oct. 7, 2004) Fog Creek Software, “How often do you delete code?” The Old Joel on Software Forum (May 2002)(hereinafter “Fog Creek”). 1 All references to the Appeal Brief are to the Appeal Brief filed October 27, 2010, which replaced the Appeal Brief filed September 20, 2010. Appeal 2011-006090 Application 11/266,990 3 Rejection on Appeal Claims 1-15 were rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Zhou and Bustelo. Ans. 4-20. Examiner’s Findings and Conclusions The Examiner relies upon a finding of Official Notice to reject dependent claim 4 and cites to Zhou at paragraph [0100] to support his position. Ans. 21. The Examiner concludes that “it would be obvious to insert the replaced function call within a comment tag in proximity to the corresponding local specific content because it would provide the corresponding function call for the local-specific content in a format that is easily understood by . . . programmers.” Ans. 10 and 21. The Examiner finds that commenting out old code instead of deleting the code during software modification is common practice in the field of software engineering. Ans. 21. That is, the Examiner finds that inserting old code (i.e., the claimed static element reference) into comment tags ensures that the old code cannot be compiled and executed by the computer, but also preserves the old code so that it can act as a reference or fallback point should the new or replacement code (i.e., the claimed static element) not work. Id. Further, the Examiner references a supplemental non-patent literature article—titled “How often do you delete code?”—as evidentiary support to justify the Examiner’s finding of Official Notice. Id. Appellant’s Contentions Appellant contends that rather than take Official Notice of any factual element relied upon when rejecting dependent claim 4, the Examiner merely states that the corresponding claim limitation is “obvious” based upon the Examiner’s own, non-expert, amateur reasoning without any evidentiary Appeal 2011-006090 Application 11/266,990 4 support. Reply Br. 3. Appellant argues that it is inappropriate for the Examiner to take Official Notice of facts without citing a prior art reference indicating that the facts asserted are capable of instant and unquestionable demonstration as being well known. Id. at 4. Moreover, Appellant asserts that it is not appropriate for the Examiner to rely solely on common knowledge in the art without evidentiary support in the record as the principal evidence upon which a rejection was based. Id. In this case, Appellant alleges that the Examiner has not shown that the claimed “insert[ing] during de-externalization a replaced static element reference in the subject document within a comment tag in proximity to a corresponding static element in the subject document” is capable of such instant and unquestionable demonstration as to defy dispute. Id. at 4-5. Appellant relies upon the same argument presented for the obviousness rejection of dependent claim 4 to rebut the obviousness rejection of dependent claims 9 and 14. See App. Br. 6-9; Reply Br. 1-5. II. ISSUE Has the Examiner erred in concluding that the combination of Zhou and Bustelo renders dependent claims 4, 9, and 14 unpatentable? In particular, the issues turns on whether the combination of Zhou, Bustelo, and the Examiner’s finding of Official Notice collectively teaches “insert[ing] during de-externalization a replaced static element reference in the subject document within a comment tag in proximity to a corresponding static element in the subject document[,]” as recited in dependent claim 4, and similarly recited in dependent claims 9 and 14. Appeal 2011-006090 Application 11/266,990 5 III. ANALYSIS Claims 1-3, 5-8, 10-13, and 15 Because Appellant does not present any arguments with respect to the Examiner’s rejection of independent claims 1, 6, and 11, and dependent claims 2, 3, 5, 7, 8, 10, 12, 13, and 15, as being unpatentable under 35 U.S.C. § 103(a), we summarily sustain the obviousness rejection of these claims. 2 Claims 4, 9, and 14 Based on the record before us, we do not discern error in the Examiner’s finding of Official Notice with respect to dependent claim 4, which recites, “insert[ing] during de-externalization a replaced static element reference in the subject document within a comment tag in proximity to a corresponding static element in the subject document.” We also do not discern error in the Examiner’s finding of Official Notice with respect to dependent claims 9 and 14, which recite a similar claim limitation. Our reviewing court has held that an adequate traverse to an Examiner’s finding of Official Notice must “contain adequate information or argument” to create on its face “a reasonable doubt regarding the circumstances justifying the … notice” of what is well known to an ordinarily skilled artisan. In re Boon, 439 F.2d 724, 728 (CCPA 1971). “To adequately traverse such a finding [of Official Notice], an applicant must specifically point out the supposed errors in the [E]xaminer’s action, which would include stating why the noticed fact is not considered to be common 2 See Manual of Patent Examining Procedure (“MPEP”) § 1205.02, 8th ed., Rev. 8, July 2010 (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, that ground of rejection will be summarily sustained by the Board.”). Appeal 2011-006090 Application 11/266,990 6 knowledge or well-known in the art.” MPEP § 2144.03(C). See also 37 CFR 1.111(b); In re Chevenard, 139 F.2d 711, 713 (CCPA 1943). “If applicant does not traverse the [E]xaminer’s assertion of [O]fficial [N]otice or applicant’s traverse is not adequate, … the common knowledge or well- known in the art statement is taken to be admitted prior art ….” MPEP § 2144.03(C). In this case, Appellant’s assertion does not contain information or argument to create on its face, a reasonable doubt regarding the circumstances justifying the Examiner’s finding of Official Notice. That is, Appellant’s assertion does not explain why the noticed fact—namely inserting comment tags into a document—is not considered to be common knowledge or well-known in the art. As a result, we find that Appellant’s traversal of the Examiner’s finding of Official Notice to be inadequate. Nonetheless, the Examiner provides documentary evidence in the Answer to support the finding of Official Notice. In particular, Fog Creek discloses inserting old code (i.e., code that is replaced) into a comment tag and leaving the comment tag in the applicable file. See, e.g., pg. 2 (posting by Ori Berger). Appellant does not dispute the content of Fog Creek. As such, we find that Fog Creek supports the Examiner’s finding of Official Notice with respect to dependent claims 4, 9, and 14. Moreover, given the limited number of places to insert Fog Creek’s comment tag containing old code into the file, and that one with ordinary skill possesses ordinary creativity and is not an automaton, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), we conclude that it would have been within the technical grasp of one with ordinarily skill in the art to insert the comment tag in close proximity to the corresponding replacement code in the file. Further, we Appeal 2011-006090 Application 11/266,990 7 note that the Examiner relies upon Zhou’s disclosure of producing a desired document by inserting local-specific content from a resource bundle manager into a local-independent document core (¶ [100]) to teach the claimed “de-externalization” process. See Ans. 9-10. Therefore, we find that the Examiner has presented sufficient evidence to warrant that Zhou, in combination with the Examiner’s finding of Official notice, collectively teaches the disputed claim limitation. It follows that the Examiner has not erred in concluding that the combination of Zhou and Bustelo renders dependent claims 4, 9, and 14 unpatentable. IV. CONCLUSION For the foregoing reasons, the Examiner has not erred in rejecting claims 1-15 as being unpatentable under 35 U.S.C. § 103(a). V. DECISION We affirm the Examiner’s decision to reject claims 1-15. 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 ak