Ex Parte Muhanna

Patent Trial and Appeal Board

Feb 26, 2013

10907898 (P.T.A.B. Feb. 26, 2013)

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.
10/907,898 04/20/2005 Emad Muhanna CA920040119US1 (018) 4898
46320 7590 02/26/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
FABER, DAVID
ART UNIT PAPER NUMBER
2177
MAIL DATE DELIVERY MODE
02/26/2013 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)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EMAD MUHANNA
____________

Appeal 2010-010457
Application 10/907,898
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 1-5 and 14-21. Claims 6-13 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellant’s invention is directed to a method and system for locale
and operating platform configuration which parses a pre-established font
properties file to identify whether a desired font referenced in a font

Appeal 2010-010457
Application 10/907,898

2

properties file supports at least one of the operating platform configuration
and associated locale. See Spec. 13, Abstract.

Claim 1 is illustrative, with key disputed limitations emphasized:
1. In an operating platform having an operating
platform configuration and an associated locale, a locale and
operating platform independent font selection method
comprising the steps of:

parsing a pre-established font properties file comprising a
listing of fonts and corresponding supported operating platform
configurations for a particular locale;

identifying within the font properties file, whether a
desired font referenced in said font properties file supports at
least one of the operating platform configuration and the
associated locale; and,

utilizing said desired font in the operating platform if it is
indicated within said font properties file that said desired font
supports said at least one of the operating platform
configuration and the associated locale.

The Examiner relies on the following as evidence of unpatentability:
Brown US 2004/0088657 A1 May 6, 2004

THE REJECTION
The Examiner rejected claims 1-5 and 14-211 under 35 U.S.C.

1 In the Non-Final Rejection, dated May 12, 2009, the Examiner entered and
then subsequently withdrew a rejection of claims 14-21 under 35 U.S.C.
§101, as directed to non-statutory subject matter. Ans. 3. Consequently that
rejection will not be addressed in our opinion.
Appeal 2010-010457
Application 10/907,898

3
§ 102(e) as anticipated by Brown. Ans. 4-72.

ISSUE
Based upon our review of the record, the arguments proffered by
Appellant and the findings of the Examiner, we find the following issue to
be dispositive of the claims on appeal:
Under § 102, has the Examiner erred in rejecting claims 1-5 and 14-21
by finding that Brown anticipates a pre-established font properties file
comprising a listing of fonts and corresponding supported operating platform
configurations for a particular locale?

ANALYSIS
Appellant argues that the Examiner erred in rejecting claims 1-5 and
14-21 by finding that Brown anticipates a pre-established font properties file
comprising a listing of fonts and corresponding supported operating platform
configurations for a particular locale, as set forth in independent claims 1, 14
and 17. Specifically, Appellant argues that Brown merely discloses a
“virtual font file” which contains a listing of “font files” which is simply a
file containing “mark-up language text having instructions that tell the glyph
generation module how, when and under what conditions fonts are to be
displayed.” App. Br. 10-13.
Appellant urges that the Examiner has repeatedly failed to provide
proper evidentiary support for the claim term “corresponding operating
platform configurations for a particular locale.” App. Br. 13.

2 Throughout this opinion, we refer to the Appeal Brief filed February 19,
2010; and, the Examiner’s Answer filed April 27, 2010.
Appeal 2010-010457
Application 10/907,898

4
The Examiner finds that it is unclear what Appellant means by
“corresponding supported operating platform configurations” and further
finds that Appellant does not provide “a clear definitive description of what
the operating platform configurations exactly are.” Ans. 8.
We find that Appellant describes in the Specification that certain fonts
may be able to display specific text within one operating platform, and not
within another operating platform. See Spec., 2-3. Further, we find that one
of ordinary skill in the art would have been able to discern what is meant by
“operating platform configuration.”
Given our findings above, the Examiner may not simply ignore the
explicit terminology set forth in Appellant’s claims, in the rejection under 35
U.S.C. § 102. Therefore we reverse the Examiner’s rejection of independent
claims 1, 14 and 17, as well as, claims 2-5, 13-16 and 18-21, dependent
therefrom.

CONCLUSION
The Examiner erred in rejecting claims 1-5 and 14-21 under § 102.

ORDER
The Examiner’s decision rejecting claims 1-5 and 14-21 is reversed.

REVERSED

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