Ex Parte Uthe

Patent Trial and Appeal Board

Dec 10, 2012

11233885 (P.T.A.B. Dec. 10, 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.
11/233,885 09/23/2005 Robert T. Uthe RSW920050090US1 (205) 1640
46320 7590 12/11/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
QUELER, ADAM M
ART UNIT PAPER NUMBER
2177
MAIL DATE DELIVERY MODE
12/11/2012 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 ROBERT T. UTHE

Appeal 2010-007463
Application 11/233,885
Technology Center 2100
____________

Before CARL W.WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-6, 8-10, 12, and 13. Claims 7 and 11 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention is directed to a method and system for smart
completion of form values in a form. See Spec. 13, Abstract of the
Disclosure.
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Application 11/233,885

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Claim 1 is illustrative, with key disputed limitations emphasized:
1. A data processing system for completing form data
comprising

smart complete logic configured for coupling to a content
server in a content distribution platform, said smart complete
logic comprising program code enabled to dispose a smart
complete control element and a save control element in a form,
said smart complete control element comprising a plurality of
selectable form value sets, wherein

the plurality of selectable form value sets are specific to
the form,

each of the selectable form value sets include a value for
each field in the form to be completed, and

said save control element comprises a configuration to
invoke logic enabled to save a set of values for fields in said
form to a form value set.

The Examiner relies on the following as evidence of unpatentability:
Pennell US 2002/0013788 A1 Jan. 31, 2002

THE REJECTIONS
1. The Examiner rejected claims 1-5 under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Ans. 4, 9-10.1

1 Throughout this opinion, we refer to the Appeal Brief filed November 13,
2009; the Examiner’s Answer mailed December 28, 2009; and, the Reply
Brief filed February 27, 2010. We note that the Examiner has withdrawn the
rejection of claims 10, 12, and 13 under 35 U.S.C. § 101 (Ans. 9-10),
therefore this rejection is not before us on appeal. Claims 6 and 10 are
directed to a computer implemented method and a computer program
product, respectively. Should there be further prosecution, we leave it to the
Appeal 2010-007463
Application 11/233,885

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2. The Examiner rejected claims 1-6, 8-10, 12, and 13 under 35
U.S.C. § 102(b) as anticipated by Pennell. Ans. 4-8.

ISSUES
Based upon our review of the record, the arguments proffered by
Appellant and the Examiner’s findings, we find the following issues to be
dispositive of the claims on appeal:
1. Under § 101, has the Examiner erred in rejecting claims 1-5 as
directed to non-statutory subject matter?
2. Under § 102, has the Examiner erred in rejecting claims 1-6, 8-10,
12, and 13 as anticipated by Pennell by finding that Pennell
discloses a smart form completion system and method which
includes a plurality of selectable form value sets wherein:
a. “the plurality of selectable form value sets are specific to the
form,” and
b. “each of the selectable form value sets include a value for
each field in the form to be completed”
as set forth in independent claim 1 and similarly recited in claims
6 and 10?

ANALYSIS
Appellant argues that the Examiner erred in rejecting claims 1-5, 10,
12, and 13 under 35 U.S.C. § 101 as directed to non-statutory subject matter,

Examiner to reevaluate these claims in view of MPEP § 2106, which was
revised after mailing of the Answer and provides new guidelines for
assessing whether such claim language satisfies 35 U.S.C. § 101.
Appeal 2010-007463
Application 11/233,885

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urging that the Examiner failed to construe the actual language of the claim.
App. Br. 5-8. Specifically, Appellant argues that claim 1 recites “smart
complete logic configured for coupling to a content server” which Appellant
argues “to be configured implies a structure,” as “an abstract idea cannot be
coupled to a content server.” App. Br. 5-6. Further, Appellant argues that
the Examiner’s reliance upon Appellant’s Specification, which recites that
the invention may be “an entirely software embodiment” is misplaced.
Reply Br. 2-5. The Examiner finds that software can indeed be “configured”
and, as noted above, points out that Appellant has described the preferred
embodiment of the present invention as “implemented in software.” Ans. 9
(citing Spec. 8, ¶[0021]).
We concur with the Examiner’s position. Software can indeed be
“configured.” Further, we find that the claim language “configured for
coupling to a content server” (claim 1) is a statement of intended use.
“An ] intended use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although
“[s]uch statements often . . . appear in the claim’s preamble,” In re Stencel,
828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose
can appear elsewhere in a claim. Id.
We therefore find that the Examiner did not err in rejecting claims 1-5
under 35 U.S.C. § 101 as directed to nonstatutory subject matter.
The Appellant argues that Pennell fails to anticipate a smart form
completion system and method which includes a plurality of selectable form
value sets wherein:
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a. “the plurality of selectable form value sets are specific to the
form,” and
b. “each of the selectable form value sets include a value for each
field in the form to be completed”
as set forth in independent claim 1 and similarly recited in claims 6 and 10.
Specifically, Appellant argues that while Pennell includes data which is
specific to the user, they do not describe providing a value for each field in
the form. App. Br. 9-11.
Further, Appellant argues that Pennell fails to describe the concept of
a user sharing a form value set with another user, as set forth in claims 8 and
12. Specifically, Appellant argues that the Examiner has presumed that
“Noodle” and “Gator” are two different users, without factual support for
that presumption. App. Br. 12-13.
The Examiner finds that Pennell discloses the existence of a plurality
of selectable form sets. Specifically, Pennell, at ¶[0030], states, “Moreover,
for each user, any one of a number of profiles 404 may be provided from
which to select to fill in the form.” Ans. 8.
Further, the Examiner finds that Pennell, at ¶[0027], describes a user
automatically placing information within the corresponding fields of a form
provided on at a web page. That form is depicted in Pennell’s Figure 7
which depicts each field of the form having been filled in from the form
helper. Ans. 8
With respect to claims 8 and 12, which set forth the sharing of form
sets, the Examiner finds that Pennell, at ¶[0029], describes multi-user
support for form data. Ans. 12.
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Application 11/233,885

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We concur with the Examiner’s findings and find that the Examiner
did not err in rejecting claims 1-6, 8-10, 12, and 13 as anticipated under 35
U.S.C. § 102(b).

CONCLUSIONS
The Examiner did not err in rejecting claims 1-5 under 35 U.S.C.
§ 101 as directed to nonstatutory subject matter.
The Examiner did not err in rejecting claims 1-6, 8-10, 12, and 13 as
anticipated under 35 U.S.C. § 102(b).

ORDER
The Examiner’s decision rejecting claims 1-6, 8-10, 12, and 13 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

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