Ex parte Mewherter

NOTICE
Pursuant to the Patent Trial and Appeal Board (PTAB) Standard Operating
Procedure 2, the PTAB designates the Decision on Appeal in Ex parte Mewherter
(Appeal 2012-007692) Precedential as to the treatment of the rejection under
35 U.S.C. § 101.

UNITED S TATES PATENT AND T RADEMARK 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.
10/685,192 	10/14/2003 	Duncan L. Mewherter 	LOT920030025US1 (010) 	4172
46321 	7590 	05/08/2013 	EXAMINER
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG 	DEBROW, JAMES J
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434 	2176
ART UNIT 	PAPER NUMBER
MAIL DATE 	DELIVERY MODE
05/08/2013 	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)

____________________
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PRECEDENTIAL OPINION
Pursuant to Patent Trial and Appeal Board
Standard Operating Procedure 2, the opinion
below is designated a precedential opinion.
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DUNCAN L. MEWHERTER, AMY D. TRAVIS,
KOAH-HSING WANG, and ROBERT C. WEIR
Appeal 2012-0076921
Application 10/685,192
Technology Center 2100
Before ROMULO H. DELMENDO, ALLEN R. MACDONALD,
JEAN R. HOMERE, JOHN A. JEFFERY, and BENJAMIN D. M. WOOD,
Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is International Business Machines Corp. (App.
Br. 1.) In Appeal 2009-009636, dated April 01, 2011, an earlier panel
affirmed the Examiner’s rejections of claims 1-22. (App. Br. 1.)

Appeal 2012-007692
Application 10/685,192
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
non-final rejection of claims 1-22. (App. Br. 2.) We have jurisdiction under
35 U.S.C. § 6(b).
We affirm and designate our affirmance of the rejection under 35
U.S.C. § 101 as a new ground of rejection.
Appellants’ Invention
Appellants invented a method and system for converting a slide from
a slide show presentation application into a raster image having linked
therewith a descriptive text (e.g., title) in a non-presentation application.
(Spec. 8, ll. 2-12, Spec. 10, l. 20 - Spec. 11, l. 5.)
Illustrative Claims
Independent claims 1 and 16 further illustrate the invention as
follows:
1. 	A system for converting slide show presentations
for use within non-presentation applications, the system
comprising:
a computing system with at least one processor and
memory;
a slide show produced by a slide show presentation
application and stored in a native format; and,
a slide show conversion process executing in the memory
of the computing system and configured for coupling to a non-
presentation application and programmed both to extract
contextual data from a slide from said slide show in its native
format, to convert the slide in said slide show to raster imagery
for use in said non-presentation application and to place a text
form of the contextual data in proximity to the raster imagery of
the slide show.
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16. 	A machine readable storage medium having stored
thereon a computer program for converting a slide show
presentation for use within a non-presentation application, the
computer program comprising a routine set of instructions for
causing the machine to perform the steps of:
extracting a slide title for a first slide in a slide show
presentation produced by a slide show presentation application
executing in memory of a computer;
converting said first slide with said slide title into a raster
image;
disposing both said slide title and said raster image of
said slide in a markup language document; and,
repeating said extracting, converting and disposing steps
for a selected group of other slides in the slide show
presentation.
Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Chakraborty 	US 2004/0194035 A1 	Sept. 30, 2004
Erol 	US 2004/0202349 A1 	Oct. 14, 2004
Chatterjee 	US 7,162,691 B1 	Jan. 9, 2007
Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. 	Claims 16-22 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
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Application 10/685,192
2. 	Claims 1-5 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
3. 	Claims 1-9, 12, 14-19, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Erol and
Chakraborty.
4. 	Claims 10, 11, 13, 20, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Erol, Chakraborty,
and Chatterjee.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the principal Brief, pages 5-13.
Nonstatutory Subject Matter Rejection
Dispositive Issue 1: Under 35 U.S.C. § 101, did the Examiner err in
concluding that claims 16-22 encompass transitory media such as “signals,
carrier waves, etc.” (Ans. 5), i.e., that claims 16-22 are directed to
nonstatutory subject matter?
Appellants argue that the claimed “machine-readable storage
medium” is distinguished from a machine-readable medium2 because the
former is limited to a medium for permanently storing information, whereas
the latter includes a transitory medium such as a carrier wave. (App. Br.
2 The term “machine-readable medium” is equivalent to the more commonly
used term “computer-readable medium.”
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6-7).3 Consequently, Appellants submit that because the recited storage
medium stores computer-readable instructions that, when executed, cause a
computer to perform certain functions, thereby establishing structural and
functional interrelationships between the computer and the stored
instructions, the claim is directed to statutory subject matter. (App. Br. 5-7.)
Appellants also assert that the Board previously has interpreted
“machine-readable storage medium” to cover only statutory subject matter.
(App. Br. 5-6 (citing Ex parte Mehta, No. 2008-004853 (BPAI Nov. 18,
2009)(nonprecedential) ; Ex parte Dureau, No. 2009-007211 (BPAI Aug.
23, 2010) (nonprecedential); and Ex parte Bash, No. 2009-007202 (BPAI
Dec. 20, 2010) (nonprecedential)).) Appellants, thus, contend that “those
skilled in the art, as well as the Honorable Board . . . recognize there is a
difference between a transmission medium (e.g., light, electricity, EMF, etc.)
and a storage medium (e.g., memory, hard disk, CD-ROM, etc.).” (App. Br.
7.)
In response, the Examiner finds that, because Appellants’
Specification fails to limit expressly the term “machine readable storage
medium” to exclude signals, carrier waves, etc., the term encompasses
transitory propagating signals. (Ans. 5, 22.) The Examiner bases in-part
this finding on guidance provided in U.S. Patent & Trademark Office,
Subject Matter Eligibility of Computer-Readable Media, 1351 Off. Gaz. Pat.
Office 212 (Feb. 23, 2010) (hereinafter Subject Matter Eligibility of
Computer-Readable Media). (Ans. 21-22.) There, the Office states that
3 Citing McGraw-Hill Dictionary of Scientific & Technical Terms.
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“[t]he broadest reasonable interpretation of a claim drawn to a computer
readable medium (also called machine readable medium and other such
variations) typically covers forms of non-transitory tangible media and
transitory propagating signals per se in view of the ordinary and customary
meaning of computer readable media, particularly when the specification is
silent.” Id.
We agree with the conclusion reached by the Examiner. Appellants
do not dispute the Examiner’s and the Office’s position, as set forth in
Subject Matter Eligibility of Computer-Readable Media, that the broadest
reasonable interpretation of “computer readable medium” typically
encompasses non-statutory subject matter. Instead, Appellants argue that the
insertion of the word “storage” into the term necessarily excludes transitory
media from the scope of the term.4
We do not find this argument persuasive. In particular, we do not find
any limitation on the form of the “machine-readable storage medium” in
Appellants’ Specification. In fact, as the Examiner points out, the
Specification does not use the term “medium” or “media” at all. (Ans. 22.)
Given this silence in the Specification, we turn to extrinsic evidence to
4 Although not binding on this Board, we do find noteworthy that the Office
recently mandated in training to its examiners that, in such cases, a claim
reciting computer-readable storage media must be construed under the
broadest reasonable interpretation as encompassing a signal per se unless
amended to avoid such language. U.S. Patent & Trademark Office,
Evaluating Subject Matter Eligibility Under 35 USC § 101 (Aug. 2012
Update); pp. 11-14, available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf.
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Application 10/685,192
determine the meaning of “machine-readable storage medium.” See Phillips
v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (“[T]he
ordinary and customary meaning of a claim term is the meaning that the
term would have to a person of ordinary skill in the art in question at the
time of the invention, i.e., as of the effective filing date of the patent
application.”); see also SunRace Roots Enter. Co. v. SRAM Corp., 336 F.3d
1298, 1302 (Fed. Cir. 2003); Brookhill-Wilk 1, LLC v. Intuitive Surgical,
Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (“In the absence of an express
intent to impart a novel meaning to the claim terms, the words are presumed
to take on the ordinary and customary meanings attributed to them by those
of ordinary skill in the art.”).5 In this regard, we are compelled to note the
Based on these cases there are several factors to consider when
determining whether a “computer readable storage medium” type claim
avoids encompassing a non-statutory signal:
(1) Extrinsic evidence relevant to the meaning as would be understood
by one skilled in the art at the time of the effective filing date of the patent
application. As opposed to the voluminous extrinsic evidence dated 2002
and thereafter, which is discussed in this decision, before 2002 there is little
evidence that the ordinary and customary meaning of such “storage
medium” terms encompassed a signal.
(2) Whether there is express intent in applicant’s specification to limit
the term, i.e., applicant’s specification is not silent as to the meaning of such
terms.
(3) Whether the claim expressly limits the medium to “non-transitory”
embodiments.
(4) Whether the claim implicitly limits the medium to “non-transitory”
embodiments. The most common form of this is the use of “means plus
function” elements in the claim (i.e., a true Beauregard type claim). Such
means plus function elements are limited by statute to the corresponding
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growing body of evidence (discussed infra) demonstrating that the ordinary
and customary meaning of “computer readable storage medium” to a person
of ordinary skill in the art was broad enough to encompass both non-
transitory and transitory media.
This extrinsic evidence is largely in the form of published
applications, including applications assigned to the same assignee as the
appeal before us (i.e., International Business Machines Corp.), which use the
identical term “machine-readable storage medium.” Such extrinsic evidence
includes (emphasis added):
US 20030097554 A1; Filing Date: 20011121
Assignee: International Business Machines Corporation.
Paragraph [0022]
Whether contained in the computer system or elsewhere,
the instructions may be stored on a variety of machine
readable storage media, such as a DASD storage (e.g. a
conventional “hard drive” or a RAID array), magnetic
tape, electronic read-only memory, an optical storage
device (e.g., CD ROM, WORM, DVD, digital optical
tape), paper “punch” cards, or other suitable computer
readable media including transmission media such as
digital, analog, and wireless communication links.
US 20030208338 A1; Filing Date: 20020503
Assignee: International Business Machines Corporation.
Paragraph [0017]
[Same sentence as above in US 20030097554 A1].
structure in the specification and equivalents thereof. Such a structure
requirement limits the claim to non-transitory embodiments.
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US 20040044735 A1; Filing Date: 20020830
Assignee: International Business Machines Corporation.
Paragraph [0028]
[Same sentence as above in US 20030097554 A1].
We also consider extrinsic evidence in the form of published
applications assigned to other assignees (including but not limited to
industry participants, such as Hewlett-Packard, Sun, Cisco, Oracle, and
Siemens) and which use similar terms (emphasis added):
“Whether contained in the computer system or elsewhere, the
instructions may be stored on a variety of machine readable storage
media, such as a DASD storage (for example, a conventional ‘hard
drive’ or a RAID array), magnetic tape, electronic read-only memory,
an optical storage device (for example, CD ROM, WORM, DVD,
digital optical tape), paper ‘punch’ cards, or other suitable computer
readable media including transmission media such as digital, analog,
and wireless communication links.” US 20050021386 A1 at [0027],
filed July 23, 2003, assigned to Hewlett-Packard Company.
“Additionally, a data signal embodied in a carrier wave (e.g.,
in a network including the Internet) may be the computer readable
storage medium.” US 20040244009 A1 at [0055], filed June 28,
2001, assigned to Sun Microsystems, Inc.
“Another example of a computer-readable storage medium is a
signal that carries software across a network.” US 20080077710 A1
at [0166], filed May 1, 2003, assigned to Cisco Technologies, Inc.
“Additionally, a data signal embodied in a carrier wave (e.g.,
in a network including the Internet) can be the computer readable
storage medium.” US 20040255307 A1 at [0032], filed May 27,
2003, assigned to Oracle International Corp.
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“Additionally, a data signal embodied in a carrier wave (e.g.,
in a network including the Internet) can be the computer readable
storage medium.” US 20020143962 A1 at [0021], filed March 14,
2001, assigned to Siemens Information and Communication
Networks, Inc.
“Additionally, a data signal embodied in a carrier wave (e.g.,
in a network including the Internet) can be the computer readable
storage medium.” US 20110171948 A1 at [0033], filed March 21,
2003, assigned to Portal Software, Inc.
“Further, computer readable storage medium may also
encompass data signals embodied in a carrier wave such as the data
signals embodied in a carrier wave carried in a network.” US
20100115149 A1 at [0060], filed December 2, 2002, assigned to
Plantronics, Inc.
“This program can be recorded on a computer-readable
storage medium so that it is executed in a general purpose digital
computer system. Such a storage medium may include magnetic
storage media (for example, ROMs, floppy discs, hard disks, etc.),
optically-readable media (for example, CD-ROMs, DVDs, etc.), and
media such as carrier waves (for example, transferring data through
the Internet).” US 20060265749 A1 at [0087], filed May 20, 2003.
“Additionally, a data signal embodied in a carrier wave (e.g.,
in a network including the Internet) may be the computer readable
storage medium.” US 20060242241 A1 at [0199], filed January 29,
2002, assigned to Neoteris, Inc.
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“The data structures and code described in this detailed
description are typically stored on a computer readable storage
medium, which may be any device or medium that can store code
and/or data for use by a computer system. This includes, but is not
limited to, magnetic and optical storage devices such as disk drives,
magnetic tape, CDs (compact discs) and DVDs (digital versatile discs
or digital video discs), and computer instruction signals embodied in
a transmission medium (with or without a carrier wave upon which
the signals are modulated).” US 20050204306 A1 at [0053], filed
September 15, 2003.
“Additionally, a data signal embodied in a carrier wave (e.g.,
in a network including the Internet) may be the computer readable
storage medium.” US 20050037367 A9 at [0029], filed August 25,
2003, assigned to Affymetrix, Inc.
“The data structures and code described in this description can
be stored on a computer readable storage medium, which may be any
device or medium that can store code and/or data for use by a
computer system. This includes, but is not limited to, magnetic and
optical storage devices such as disk drives, magnetic tapes, CD
(compact discs) and DVD (digital video disks), and computer
instruction signals embodied in a transmission medium.” US
20050007567 A1 at [0093], filed July 10, 2003, assigned to Fortis
Systems, Inc.
“Further, computer readable storage medium may also
encompass data signals embodied in a carrier wave such as the data
signals embodied in a carrier wave carried in a network.” US
20020180725 A1 at [0082], filed April 23, 2002, assigned to
Quantum3D, Inc.
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“The term ‘computer-readable storage medium’ refers to any
medium that participates in providing the symbolic representations of
operations to a processor for execution. Such media may take many
forms, including, without limitation, volatile memory, nonvolatile
memory, flash memory, electronic transmission media, and the like.”
US 20040236726 A1 at [0027], filed May 19, 2003, assigned to
Teracruz, Inc.
“Additionally, a data signal embodied in a carrier wave (e.g.,
in a network, e.g., internet, intranet, and the like) may be the
computer readable storage medium.” US 20030175815 A1 at
[0102], filed March 26, 2003, assigned to Caliper Technologies Corp.
We do not believe that the extrinsic evidence provided by Appellants,
namely the definition of “storage medium” from the McGraw-Hill
Dictionary of Scientific and Technical Terms, requires a different result.
Appellants argue that
a storage medium is well-known to mean ‘any device or
recording medium into which data can be copied and held until
some later time, and from which the entire original data can be
obtained.’ By comparison, a signal cannot hold data until some
later time due to its transitory nature. This clearly indicates that
a ‘storage medium’ is not a transitory medium, but a tangible
medium and thus is statutory matter.
(App. Br. 7 (citing Mc-Graw-Hill Dictionary of Scientific and Technical
Terms) (emphasis in original).) But a signal with embedded data fully
comports with this definition, for data can be copied and held by a transitory
recording medium, albeit temporarily, for future recovery of the embedded
data.
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We also agree with the Examiner that the Mehta, Dureau, and Bash
decisions do not compel a different result. As a preliminary matter, none of
these opinions has been designated as precedential, and therefore, none of
the opinions is binding on this panel. Moreover, as the Examiner points out,
these opinions are distinguishable from the present case. (Ans. 20-21.) For
example, the Specifications at issue in Dureau and Bash contained express
language that excluded transitory media from the definition of storage
medium. (Ans. 20-21.) And in none of these three cases did the Board take
into account published-patent-application evidence discussed above.
Further, Mehta has an effective filing date of May 25, 2000, and the later
dated extrinsic evidence cited supra is inapplicable.
Given the significant amount of available guidance and evidence
supra, we conclude that those of ordinary skill in the art would understand
the claim term “machine-readable storage medium” would include signals
per se. Further, where, as here, the broadest reasonable interpretations of all
the claims each covers a signal per se, the claims must be rejected under 35
U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten,
500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not
directed to statutory subject matter); Subject Matter Eligibility of Computer-
Readable Media, supra; U.S. Patent & Trademark Office, Interim
Examination Instructions for Evaluating Subject Matter Eligibility Under 35
U.S.C. § 101, Aug. 24, 2009; p. 2, available at
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08
25_interim_101_instructions.pdf; U.S. Patent & Trademark Office,
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Evaluating Subject Matter Eligibility Under 35 USC § 101 (August 2012
Update); pp. 11-14, available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf.
We note that Appellants are not precluded from amending these
claims to overcome this rejection. Guidance on this point is provided in
U.S. Patent & Trademark Office, Subject Matter Eligibility of Computer
Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“A claim
drawn to such a computer readable medium that covers both transitory and
non-transitory embodiments may be amended to narrow the claim to cover
only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by
adding the limitation ‘non-transitory’ to the claim.”). See also U.S. Patent &
Trademark Office, Evaluating Subject Matter Eligibility Under 35 USC
§ 101 (August 2012 Update) (pp. 11-14), available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf
(noting that while the recitation “non-transitory” is a viable option for
overcoming the presumption that those media encompass signals or carrier
waves, merely indicating that such media are “physical” or tangible” will not
overcome such presumption).
In reaching our decision, we rely on additional evidence not of record.
Therefore, we designate this portion of our decision as a new ground of
rejection.
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Written Description Rejection
Dispositive Issue 2: Under 35 U.S.C. § 112, first paragraph, did the
Examiner err by finding that claims 1-5 fail to comply with the written
description requirement?
Appellants argue that the Examiner erred in finding that the limitation
of placing a text form of contextual data in proximity to the raster imagery
of the slide show is not supported adequately by Appellants’ original
disclosure. In particular, Appellants submit that one of ordinary skill in the
art would have recognized the recitation of linking the image to the title
within a markup language document (Spec. 11, ll. 1-5) adequately supports
the disputed limitation. (App. Br. 10-11.)
In response, the Examiner finds that the cited disclosure of extracting
a title from a slide and linking it to an image in a webpage in no way
supports the newly claimed limitation of placing the title of the slide in
proximity to the image. (Ans. 24-25.)
On the record before us, we find no error in the Examiner’s finding
that the cited claims fail to comply with the written description requirement.6
Appellants’ Specification states the following:
6 To satisfy the written description requirement, a patent specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d
1306, 1319 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555
1563 (Fed. Cir. 1991). However, a showing of possession alone does not
cure the lack of a written description. Enzo Biochem, Inc. v. Gen-Probe,
Inc., 323 F.3d 956, 969 (Fed. Cir. 2002). Much of the written description
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Within the non-presentation application, in block 250 the
title can be linked to the image within the markup language
document and the title further can be used separately from the
image such as within a meeting agenda.
(Spec. 11, ll. 2-5.)
The cited portion of Appellants’ Specification indicates that the title
of the slide and the image can be linked to each other within the non-
presentation application. However, we note that, while the claimed
“proximity” recitation requires that the title and the image are linked, it also
requires that they are located near each other. Therefore, the Specification’s
mere disclosure that the image and the title are linked within the same
application does not go far enough to convey with reasonable clarity to
ordinarily skilled artisans that Appellants possessed the proximity
requirement as claimed when the application was filed. Although the
written description requirement under § 112 does not demand (1) any
particular form of disclosure, or (2) the Specification recite the claimed
invention verbatim, a description that merely renders the invention obvious
does not satisfy the requirement.7 Therefore, to the extent that the recited
case law addresses whether the specification as originally filed supports
claims not originally in the application. An applicant may show possession
of the claimed invention by describing the claimed invention with all of its
limitations using such descriptive means as words, structures, figures,
diagrams, and formulas that fully set forth the claimed invention. Lockwood
v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
7 Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir.
2010) (en banc) (citations omitted). Our reviewing court guides that “[a]
description which renders obvious the invention for which an earlier filing
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“proximity” feature would have been obvious from this disclosure, we
conclude that such conjecture would have been insufficient to support
Appellants’ allegation that they possessed the disputed claim limitation at
the time of the invention.
Consequently, we agree with the Examiner that the cited disclosure
does not describe the disputed limitation in sufficient detail to thereby
apprise the ordinarily skilled artisan that Appellants possessed the claimed
subject matter at the time of the invention. It follows that the Examiner did
not err in rejecting claims 1-5 as failing to comply with the written
description requirement.
Obviousness Rejections
Dispositive Issue 3: Under 35 U.S.C. § 103, did the Examiner err by
finding that the combination of Erol and Chakraborty teaches or suggests
placing a text form of contextual data in proximity to a raster imagery of a
slide show, as recited in claim 1?
Appellants argue that the Examiner erred in finding that
Chakraborty’s disclosure remedies the Examiner’s admitted deficiencies of
Erol set forth in the disputed limitations emphasized above. In particular,
date is sought is not sufficient.” Lockwood, 107 F.3d at 1572 (quoting
Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)). “[I]t is ‘not a
question of whether one skilled in the art might be able to construct the
patentee’s device from the teachings of the disclosure.... Rather, it is a
question whether the application necessarily discloses that particular
device’” (Id.).
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Appellants argue that Chakraborty’s disclosure of combining in a single file
an extracted title stored in a first partial AIU file, and an extracted image
stored in a second partial AIU file does not teach or suggest that the title and
the image are proximate to each other. (App. Br. 12-13.)
In response, the Examiner finds that because Appellants construe the
title being in proximity of the image as the two being linked (not necessarily
in a non-presentation application), Chakraborty’s disclosure of combining in
a single file an extracted text portion stored in a separate file with an image
portion stored in another file teaches the disputed limitations. (Ans. 26-27.)
On the record before us, we agree with the Examiner’s findings and
ultimate conclusion of obviousness. First, we agree with the Examiner’s
finding that the recitation whereby the raster imagery is for use within a non-
presentation application, as set forth in the preamble and the body of the
claim, is a statement of intended use. (Ans. 26.) Our reviewing court has
held that a statement of intended use in an apparatus claim cannot
distinguish over a prior art apparatus that discloses all the recited structural
limitations and is capable of performing the recited function. See In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We also note that “[a]n
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.” See 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,” a statement of intended
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use or purpose can appear elsewhere in a claim. In re Stencel, 828 F.2d 751,
754 (Fed. Cir. 1987).
Second, we find that the recited intended use limitation is met fully by
an equivalent prior art structure disclosed in Chakraborty, which appears to
be capable of performing the recited function. In particular, we find that by
combining the partial files into the single file (Fig. 1), Chakraborty’s
disclosure teaches or suggests linking the title and the image stored in the
single combined AIU file (e.g., XML file), which is capable of being used as
a non-presentation application. (¶¶[0021]-[0024], [0037], [0055]). It
follows that the Examiner did not err in finding that the combination of Erol
and Charkraborty teaches the disputed limitations.
Because claims 2-22 are not argued separately, they fall together with
claim 1 for the same reasons discussed above. See 37 C.F.R.
§ 41.37(c)(1)(vii).
DECISION
We affirm the Examiner’s rejection of claims 16-22 under 35 U.S.C.
§ 101 as being directed to nonstatutory subject matter.
We affirm the Examiner’s rejection of claims 1-5 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
We affirm the Examiner’s rejections of claims 1-22 under
35 U.S.C. § 103(a) as being unpatentable.
19

Appeal 2012-007692
Application 10/685,192
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
37 C.F.R. § 41.50(b)
llw
20