Ex Parte Schultz et al

Patent Trial and Appeal BoardJun 3, 2014

10989014 (P.T.A.B. Jun. 3, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DALE M. SCHULTZ and ROY HUDSON ____________________ Appeal 2011-005387 Application 10/989,014 Technology Center 2600 ____________________ Before STANLEY M. WEINBERG, JOHNNY A. KUMAR, and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005387 Application 10/989,014 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 7-15. Claims 1-6 and 16-24 are canceled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. THE INVENTION Appellants describe their invention as a method for testing the display of bi-directional language script prior to translation in an application under test using unidirectional glyphs with shaping indicators to simulate right-to- left characters. Abst. Claim 7, reproduced below, is representative of the claimed subject matter: 7. A method for testing the display of bi-directional language script prior to translation in an application under test, the method comprising the steps of: using unidirectional glyphs with shaping indicators selected from the group consisting of an overbar and an underscore, to simulate right-to-left characters, the shaping indicators each indicating a shaping of a corresponding right-to- left character code point; and, displaying the characters each with a corresponding one of the shaping indicators placed over a corresponding one of the characters in a display of a computer. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ghali Gohari US 2003/0040909 A1 US 6,778,950 B2 Feb. 27, 2003 Aug. 17, 2004 Appeal 2011-005387 Application 10/989,014 3 REJECTIONS1 The Examiner made the following rejections: Claim 7 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Ghali. Ans. 3-4. Claims 8-15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ghali and Gohari. Ans. 4-8. APPELLANTS’ CONTENTION Contrary to the improperly broad interpretation of the disputed shaping indicator used by the Examiner, a reasonable reading of Ghali fails to disclose displaying the characters each with a corresponding one of the shaping indicators placed over a corresponding one of the characters in a display of a computer as required by claim 7. App. Br. 4-6. ISSUE ON APPEAL Based on Appellants’ arguments in the Appeal Brief (App. Br. 3-8) and Reply Brief (Reply Br. 1-5), the issue presented on appeal is whether the Examiner erred in finding Ghali discloses the disputed limitations of claim 7. 1 Appellants argue the rejection of independent claim 7. Separate patentability is not argued for dependent claims 8-15. Therefore, based on Appellants’ arguments, we decide the appeal of claims 7-15 based on claim 7 alone. Appeal 2011-005387 Application 10/989,014 4 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Ans. 3-8) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 8-12) and concur with the conclusions reached by the Examiner. We highlight the following for emphasis. Appellants argue “[i]ntegral to claim 1 is the display of characters each with a corresponding shaping indicator placed thereover in the display of a computer. This claimed teaching cannot be found in Ghali.” App. Br. 4. Appellants direct attention to the Specification at paragraph [0018] for showing that “each glyph can have shaping indicia such that when rendered by the product under test, the shaping of the right-to-left character code point is evident.” App. Br. 6. In contrast to the shaping indicia ascribed by the Specification to the glyph, Appellants argue “[the] Examiner's improper claim construction of ‘shaping indicator’ as a generic ‘symbol’ exceeds the legal standard for claim construction during examination and inhibits Examiner's ability to properly compare the cited art to Appellants’ claims.” App. Br. 7. The Examiner responds, finding the cited portion of Appellants’ Specification describes non-limiting examples but is consistent with the Examiner’s broader interpretation. Ans. 9. Although the claims are interpreted in light of the Specification, limitations from the Specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). In particular, the Examiner finds and we agree “in the Ghali reference, the Roman language with diacritics represented by English Appeal 2011-005387 Application 10/989,014 5 letters with diacritics can simulate in such a particular way Arabic characters or right to left characters as claimed.” Ans. 10. Furthermore we agree with the Examiner that a “shaping aspect” is disclosed in Ghali’s paragraph [0017] table showing ‘ē’, ‘t’, and ‘d’ mapped sounds and then to Arabic letters (see also Ghali [0037] and Table 1) thereby disclosing the disputed shaping indicators. See Ans. 10. Accordingly, we agree with the Examiner’s finding that Ghali discloses “using unidirectional glyphs with shaping indicators … to simulate right-to-left characters, the shaping indicators each indicating a shaping of a corresponding right-to-left character code point” because, under a broadest reasonable interpretation, Ghali shows Roman characters and diacritics indicating the shape of (or specifying a particular) Arabic character code point. Furthermore, we disagree with Appellants that the disputed shaping indicator has been too broadly interpreted by the Examiner to include generic symbols (App. Br. 7) and find such an interpretation to be both consistent with Appellants’ Specification and reasonable. While we agree that Ghali discloses the disputed limitation including an indication of character or glyph shape for the reasons supra, Appellants’ arguments distinguishing over Ghali based on the information content of the indicators are predicated on non-functional descriptive material (App. Br. 6) and are therefore unpersuasive of reversible error. In particular, the disputed shaping indicators are nonfunctional in the context of claim 7 because the indicators (i.e. information or data representative of a shaping of a corresponding right-to-left character code point) do not perform any function other than as information being displayed. Once displayed and perceived by a user any meaning given to the indicators, whether associated with a character shape or how a character is to be pronounced, has no functional Appeal 2011-005387 Application 10/989,014 6 relationship to the steps of the claim. Such non-functional descriptive material is not accorded patentable weight.2,3 Therefore, because the shaping indicators are merely messages or data to be displayed that are intended for human perception, the information content of the shaping indicators is non- functional descriptive material and Appellants’ arguments focusing on the meaning of the indicators is not persuasive of reversible Examiner error. Therefore, for the reasons supra, we sustain the rejection of independent claim 7 under 35 U.S.C. § 102(b). For similar reasons we sustain the rejection of dependent claims 8-15 under 35 U.S.C. § 103(a), the dependent claims not separately argued. CONCLUSIONS We find: 1. The Examiner did not err in rejecting claim 7 under 35 U.S.C. § 102(b) using Ghali. 2. The Examiner did not err in rejecting claims 8-15 under 35 U.S.C. § 103(a). 2 The informational content of non-functional descriptive material is not entitled to weight in the patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006). 3 See also MPEP § 2111.05 III, 8th ed., Rev. 9, Aug. 2012 (“where the claim as a whole is directed [towards] conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists.”). Appeal 2011-005387 Application 10/989,014 7 DECISION The decision of the Examiner to reject claims 7-15 is affirmed. 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 tj