831,926 7 et al.

Patent Trials and Appeals Board

May 1, 2020

90009995 - (D) (P.T.A.B. May. 1, 2020)

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.
90/009,995 05/29/2012 7,831,926 161539-0005(926PO-2) 3089
29000 7590 05/01/2020
Irell & Manella LLP
840 Newport Center Dr., Ste. 400
Newport Beach, CA 92677
EXAMINER
BASEHOAR, ADAM L
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/01/2020 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 SOFTVIEW L.L.C.
Appellant and Patent Owner
____________

Appeal 2019-001127
Reexamination Control 90/009,995
Patent 7,831,926 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, ERIC B. CHEN, and BRIAN J. MCNAMARA,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL
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This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final
rejection of claims 1–29, 32–39, 42, and 44–51. Claim 69 was cancelled
during the reexamination proceeding. Claims 53, 54, 56–58, 60–68, 70, 71,
73, 74, and 76–88 were not subject to reexamination. Claims 30, 31, 40, 41,
43, 52, 55, 59, 72 and 75 were cancelled in a previous inter partes review
proceeding. We have jurisdiction under §§ 134(b) and 306.
We affirm-in-part.

STATEMENT OF THE CASE
Reexamination Proceedings
A request for ex parte reexamination of U.S. Patent No. 7,831,926 B2
(“the ’926 patent”) was filed on April 13, 2012, and assigned Reexamination
Control No. 90/009,995. The ’926 patent, entitled “Scalable Display of
Internet Content on Mobile Devices,” issued November 9, 2010 to
Gary B. Rohrabaugh and Scott A. Sherman, based on Application No.
11/738,486, filed April 21, 2007.
The ’926 patent is said to be a continuation of Application No.
09/878,097, filed June 8, 2001, now U.S. Patent No. 7,210,099, which is a
continuation-in-part of Application No. 09/828,511, filed April 7, 2001, now
abandoned. The ’926 patent is also said to claim priority to U.S. Provisional
Application No. 60/211,019, filed June 12, 2000, and U.S. Provisional
Application No. 60/217,345, filed July 11, 2000.
The ’926 patent is said to be assigned to SoftView, L.L.C., the real
party in interest. (Appeal Br. 1.)

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Patent Owner’s Invention
Patent Owner’s invention relates to mobile devices that are enabled to
support resolution-independent scalable display of Internet (Web) content,
allowing Web pages to be scaled (zoomed) and panned for better viewing on
smaller screen sizes. (Abstract.)

Related Litigation
The ’926 patent has been asserted in SoftView LLC v. Apple Inc.,
No. 1:10-cv-00389 (D. Del. May 10, 2010) and SoftView LLC v. HTC Corp.,
No. 1:12-cv-00984 (D. Del. July 26, 2012). (Appeal Br. 1.)
The ’926 patent was also subject to inter partes review in Softview
LLC v. Kyocera Corp. and Motorola Mobility LLC, Nos. IPR2013-00004
and IPR2013-00257 (PTAB Mar. 27, 2014), aff’d, No. 2014-1599 (Fed. Cir.
Feb. 9, 2015).

The Claimed Invention
Claims 1, 2, and 29 are exemplary, with disputed limitations in italics:
1. A mobile device, comprising:
a processor,
a wireless communications device operatively coupled to
the processor, to facilitate communication with a network via
which Web content may be accessed;
a touch-sensitive display;
a memory, operatively coupled to the processor; and
storage means, operatively coupled to the processor, in
which a plurality of instructions are stored that when executed
by the processor enable the mobile phone to perform operations
including,
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enabling a user to request access to a Web page
comprising HTML-based Web content defining an original
page layout, functionality, and design of content on the Web
page;
retrieving HTML-based Web content associated with the
Web page;
translating the HTML-based Web content to produce
scalable vector-based page layout information;
employing the scalable vector-based page layout
information and/or data derived therefrom to,
render a view of at least a portion of the Web page on the
touch-sensitive display using a first scale factor; and
re-render the Web page in response to associated user
inputs to enable a user to iteratively zoom in and out views of
the Web page on the display while preserving the original page
layout, functionality, and design of the content on the Web page
defined by the HTML based Web content,
wherein preservation of the functionality defined by the
HTML-based content includes preservation of hyperlink
functionality.

2. The mobile device of claim 1, wherein the device
comprises a mobile phone.

29. The mobile device of claim 1, wherein the HTML-
based Web content includes cascading style sheet content
defining layout and presentation attributes for the Web page.

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The Rejections
A. Claims 1 and 3–28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the Pad++1 and SVF.2
B. Claims 2, 32–39, 42, and 44–51 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pad++, SVF, Nokia (Nokia Press
Release, Nokia Unveils World’s First All-In-One Communicator for the
Americas, (Sept. 19, 1996), and Palm (Palm Press Release, 3Com
Announces the Palm VII Connected Organizer, the First Handheld Solution
for Out-of-the-box Wireless Internet Access (Dec. 2, 1998)).
C. Claims 2, 32–39, 42, and 44–51 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pad++, SVF, and Newton (Apple
Computer, Inc., News Release, Apple Outlines Plethora of Newton Wireless

1 “Pad ++” refers collectively to the following references: (i) Benjamin B.
Bederson & James D. Hollan, Pad++: A Zoomable Graphical
Interface System, CHI ‘95 MOSAIC OF CREATIVITY (1995); (ii) Benjamin B.
Bederson & George W. Furnas, Space-Scale Diagrams: Understanding
Multiscale Interfaces, CHI ‘95 PROCEEDINGS (1995); (iii) Benjamin B.
Bederson et al., A Zooming Web Browser, 2667 SPIE 260–71 (1996); (iv)
Ben Bederson & Jon Meyer, Implementing a Zooming User Interface:
Experience Building Pad ++, 28 SOFTWARE–PRACTICE & EXPERIENCE
1101–35 (1998); (v) Benjamin B. Bederson et al., Pad++: A Zoomable
Graphical Sketchpad for Exploring Alternate Interface Physics, 7 J. VISUAL
LANGUAGES & COMPUTING 3–31 (1996); (vi) Pad++ Reference Manual
Version 0.2.7 (1996); (vii) Pad++ Programmer’s Guide Version 0.2.7
(1996); and (viii) Jonathan Meyer, A Brief Tour Through Pad++, available
at http://www.cs.umd.edu/hcil/pad++/tour/ (“Pad++ Tour”).
2 “SVF” (Simple Vector Format) refers collectively to: (i) Specification for
the Simple Vector Format v. 1.1 (1995); (ii) “New CAD System Works
With AutoCAD Drawings Without Translation” (1996); and (iii) “Bring
New CAD Viewing Power to the Internet” (1996).
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Communications Solutions at MessagePad 120 Launch (Jan. 30, 1995)).
D. Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pad++, SVF, and Bray (Tim Bray, XML support in IE5,
XLM.com (Mar. 18, 1999)).
E. Claims 1 and 3–28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pad++ and VML (Brian Matthews et al., Vector
Markup Language (VML), World Wide Web Consortium Note, Note-VML-
19980513 (May 13, 1998)).
F. Claims 2, 32–39, 42, and 44–51 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pad++, VLM, Nokia, and Palm.
G. Claims 2, 32–39, 42, and 44–51 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pad++, VLM, and Newton.
H. Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pad++, VML, and Bray.
I. Claims 12, 14, 21, 42, and 51 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pad++, SVF, and various combinations
of Nokia, Palm, Newton, and VML.
Patent Owner relied upon the following in rebuttal to the Examiner’s
rejections:
Declaration under 37 C.F.R. § 1.132 of Michael L. Howard,
November 16, 2016 (Ex. A).
Declaration under 37 C.F.R. § 1.132 of Wolf (formerly Scott Collins),
dated July 15, 2017 (Ex. B).
Declaration under 37 C.F.R. § 1.132 of Wolf (formerly Scott Collins),
dated July 24, 2017 (Ex. D).
Declaration under 37 C.F.R. § 1.132 of Glenn Reinman, Ph.D., dated
July 17, 2013 (Ex. F).
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Deposition of Scott Forstall, dated May 3, 2013, SoftView LLC v.
Apple Inc., No. l:10-cv-00389 (D. Del. May 10, 2010) (Ex. H).
Deposition of Benjamin B. Bederson, dated February 13, 2013,
SoftView LLC v. Apple Inc., No. l:10-cv-00389 (D. Del. May 10,
2010) (Ex. G).

ANALYSIS
§ 103 Rejection—Pad++ and SVF
Claims 1 and 3–28
We are unpersuaded by Patent Owner’s arguments (Appeal Br. 17–20;
see also Reply Br. 10–12) that the combination of Pad++ and SVF would
not have rendered obvious independent claim 1, which includes the
limitation “re-render the Web page . . . while preserving the original page
layout, functionality, and design of the content on the Web page defined by
the HTML based Web content.”
The Examiner found that the zoomable HTML web browser of Pad++
Tour,3 which includes displaying HTML documents, corresponds to the
limitation “re-render the Web page . . . while preserving the original page
layout, functionality, and design of the content on the Web page defined by
the HTML based Web content, wherein preservation of the functionality
defined by the HTML-based content includes preservation of hyperlink
functionality.” (Ans. 13.) We agree with the Examiner’s findings.
Pad++ Tour relates to a computer screen having a zoomable surface,
“[f]or example, several million pages of text could be fit on the surface by
reducing it sufficiently in scale, making any number of on-line information

3 The Examiner cited to Jonathan Meyer, A Brief Tour Through Pad++.
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services, encyclopedias, etc., directly available.” (P. 2.) In one example of
zooming a user interface, entitled “An HTML browser,” Pad++ Tour
explains the following:
A zooming version of Mosaic and Netscape? This is not
such a strange idea. The third example Pad++ application we
will look at is a simple Pad++ web browser.
Although the web browser we show here is still fairly
primitive, you could imagine a much more advanced version.
Does the idea of using a zoomable Web browser excite you?
(P. 86.)
In two unreferenced figures, reproduced below, Pad++ Tour depicts
screen snapshots of: (i) a regularly sized HTML document entitled “Ben
Bederson’s Home Page” (annotated with a dashed rectangle indicating the
zoomed-in region); and (ii) the zoomed-in view of the same HTML
document:

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Moreover, Pad++ Tour explains the following:
When you follow a link, the relevant document is loaded
into Pad++ and placed on the surface to the right of the original
document, at a smaller scale. Here you can see the ‘Pad++:
Multiscale interfaces’ document loaded beside the home page.
The Pad++ HTML browser will lay out sub-documents in
two columns next to the parent document. Because Pad++ is
zoomable, there is always enough space between those two
columns for placing further documents reached from those sub-
documents!
(P. 91.) In a third unreferenced figure, reproduced below, Pad++ Tour
depicts screen snapshots of the “Pad++: Multiscale interfaces” HTML
document (annotated with a dashed rectangle) loaded next to the regularly
sized HTML document entitled “Ben Bederson’s Home Page”:

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Because the first and third unreferenced figures in Pad++ Tour depict a
regularly sized HTML document entitled “Ben Bederson’s Home Page,”
Pad++ Tour teaches the limitation “the original page layout, functionality,
and design of the content on the Web page defined by the HTML based Web
content.” Moreover, because the second unreferenced figure in Pad++ Tour
depicts a zoomed-in view of the regularly sized HTML document entitled
“Ben Bederson’s Home Page,” and the third unreferenced figure in Pad++
Tour depicts the HTML document associated with the “Pad++: Multiscale
interfaces” link is displayed, Pad++ Tour teaches the limitation “re-render
the Web page . . . while preserving the original page layout, functionality,
and design of the content on the Web page defined by the HTML based Web
content, wherein preservation of the functionality defined by the HTML-
based content includes preservation of hyperlink functionality.”
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Patent Owner argues that “[t]here is no evidence that the views shown
in Figures 1 and 2 of Bederson preserves the HTML-based Web content
defining the original page layout, functionality, and design of content on the
Web page, as the HTML-based Web content for these pages is not
available”4 and “what is known is Pad++ was not capable of rendering the
vast majority of HTML elements, such as basic layout elements including
tables, forms, divs and spans.” (Appeal Br. 13; see also Reply Br 10.) To
support this argument, Patent Owner references paragraphs 25–34 of the
Reinman Declaration (Ex. F). (Appeal Br. 13.) However, the Examiner also
cited to Pad++ Tour for teaching the limitation “while preserving the
original page layout, functionality, and design of the content on the Web
page defined by the HTML based Web content.”
Moreover, one relevant portion of the Reinman Declaration (Ex. F)
states the following:
Section 3 of the Brief Tour only shows how the web page looks
like after it has been rendered by Pad++. The Brief Tour does
not show the original web page before being rendered by Pad++
to determine whether the original page layout, functionality,
and design was preserved. . . . One of ordinary skill in the art
cannot determine the original page layout, functionality, and
design of the original web page from the Brief Tour . . . .
(¶ 23.) However, as discussed previously, the first and third unreferenced
figures in Pad++ Tour depict a regularly sized HTML document entitled
“Ben Bederson’s Home Page,” and accordingly, Pad++ Tour teaches the

4 Patent Owner references Figure 1 and 2 of Benjamin B. Bederson et al., A
Zooming Web Browser, 2667 SPIE 260–71 (1996).
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limitation “the original page layout, functionality, and design of the content
on the Web page defined by the HTML based Web content.”
Patent Owner further argues the following:
Pad++ Tour suggests that a zooming version of Mosaic
or Netscape is not a strange idea. This statement is a mere
suggestion of possibly creating a zoomable browser using
Mosaic or Netscape at the time the Tour Web pages were
created. Based on the version v.0.1.8 shown in the Tour
images, this predates the version of Pad++ used in Bederson-4
(v0.2.3), meaning the Tour Web pages (including the foregoing
statement) were originally posted sometime in 1995 or earlier.
Moreover, this statement is not a teaching that the Pad++
browser could be (or could have been) combined with an
existing browser such as Netscape or Mosaic (in 1995), nor
provides any detail on any level to how Pad++ could have been
combined with Mosaic or Netscape.
(Appeal Br. 17 (emphases omitted); see also Reply Br. 10–11.) In
particular, Patent Owner argues the following:
Patent Owner has introduced substantial evidence a
PHOSITA would not have been able to implement a zoomable
version of Netscape at the time of the invention without undue
experimentation, there would have been no motivation to do so,
and no reasonable expectation of success. The developers of
Mozilla themselves, who had skill levels well beyond a
PHOSITA, were not able to implement a zooming version of a
desktop browser (Mozilla Firefox, which superseded Netscape
Navigator) until 2007, even though this was initially identified
as a feature in 1999 and Mozilla was motivated to implement
the feature. With further respect to Mosaic at the time of the
invention it had not been updated for approximately 4 years,
and didn’t even support HTML 3 or 3.2, much less HTML 4 or
CSS and had been superseded by Netscape and Internet
Explorer; accordingly, there would have been no motivation at
the time of the invention to implement a zoomable version of
Mosaic.
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(Appeal Br. 17 (citations and footnotes omitted); see also Reply Br. 10–11.)
However, as discussed previously, Pad++ Tour explains that for “[t]he third
example Pad++ application we will look at is a simple Pad++ web browser”
and “[a]lthough the web browser we show here is still fairly primitive, you
could imagine a much more advanced version.” (P. 86.) Even if Patent
Owner is correct that a zoomable version of Netscape or Mosaic could not
have been technically implemented, such evidence does not necessarily
mean that one of ordinary skill in the art would have excluded all web
browsers from the implementation of a zoomable browser.
Therefore, we agree with the Examiner that the combination of Pad++
and SVF would have rendered obvious independent claim 1, which includes
the limitation “while preserving the original page layout, functionality, and
design of the content on the Web page defined by the HTML based Web
content.”
We are also unpersuaded by Patent Owner’s arguments (Appeal
Br. 20; see also Reply Br. 10–11) that the combination of Pad++ and SVF
would not have rendered obvious independent claim 1, which includes the
limitation “translating the HTML-based Web content to product scalable
vector-based page layout information.”
The Examiner found that the multiple objects of Pad++ Tour, residing
at specific x, y, zoom coordinates within a space, correspond to the
limitation “translating the HTML-based Web content to product scalable
vector-based page layout information.” (Final Act. 7–8 (citing Request for
Reexamination 463–64, filed April 13, 2012).) Alternatively, the Examiner
found the Simple Vector Format plug-ins feature for scalable vector graphics
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of SVL corresponds to the limitation “translating the HTML-based Web
content to product scalable vector-based page layout information.”
(Ans. 17–18.) We agree with the Examiner’s findings with respect to Pad++
Tour.
Pad++ Tour explains the following:
The Pad++ surface as an infinite zoomable space, with
objects residing at specific x, y, zoom coordinates within that
space.
Sometimes, however, you want to be able to compare
two distant locations, or to look at a zoomed out view of a
document together with a close up view.
(P. 97.) In other words, Pad++ explains that: (i) an (x,y) coordinate is
associated with an object for a “zoomed out view”; and (ii) an (x, y) zoom
coordinate is associated with the object in “a close up view.” Because
Pad++ explains that there are two sets of (x,y) coordinates (i.e., a vector),
one set for the “zoomed out view” and one set for “a close up view,” Pad++
teaches the limitation “translating the HTML-based Web content to produce
scalable vector-based page layout information.”
Patent Owner argues that following:
Pad++ uses vector-based drawings facilities in X
Windows. The SVF plugin was designed to enable SVF
content that was embedded in a Web page (such as a CAD
drawings or vector graphic) to be rendered by a browser. . . .
This combination makes no sense, and there is nothing in any
of the Pad++ references or the SVF references that suggests it.
(Appeal Br. 20.) However, even if Patent Owner is correct that the
combination of Pad++ and SVF is improper, the Examiner cited SVF as a
cumulative reference for teaching the limitation “translating the HTML-
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based Web content to product scalable vector-based page layout
information.” (Ans. 17–18.)
Therefore, we agree with the Examiner that the combination of Pad++
and SVF would have rendered obvious independent claim 1, which includes
the limitation “translating the HTML-based Web content to product scalable
vector-based page layout information.”
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 103(a). Claims 3–28 depend from independent claim 1, and
Patent Owner had not presented any additional substantive arguments with
respect to these claims. Therefore, we sustain the rejection of claims 3–28
under 35 U.S.C. § 103(a) for the same reasons discussed with respect to
independent claim 1.

§ 103 Rejection—Pad++, SVF, Nokia, and Palm
We are unpersuaded by Patent Owner’s arguments (Appeal Br. 25–41;
see also Reply Br. 16–30) that the combination of Pad++, SVF, Nokia, and
Palm would not have rendered obvious dependent claim 2, which includes
the limitation “wherein the device comprises a mobile phone.”
The Examiner found that the zoomable PDA (Personal Digital
Assistants) of Pad++ Tour corresponds to the limitation “wherein the device
comprises one of a handheld device or a palm-held device.” (Ans. 21–22.)
We agree with the Examiner’s findings.
Pad++ Tour explains the following:
Pad++ could also be viewed as a way to implement an
alternative windowing system based on zooming. Your whole
desktop could be zoomable. This seems especially attractive
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for systems which have small screens, such as handheld
computers (i.e. PDA’s).
(P. 141.) One relevant definition of a “PDA” is “[a] lightweight palmtop
computer designed to provide specific functions like personal organization
(calendar, note taking, database, calculator, and so on) as well as
communications.”5 Accordingly, because a PDA is defined as a palmtop
computer having communication functions, a mobile phone is an obvious
variant. Moreover, because Pad++ Tour explains that the zoomable
windowing system is attractive for systems having small screens, such as
PDAs or mobile phones, Pad++ Tour teaches the limitation “wherein the
device comprises a mobile phone.”
First, Patent Owner argues that “the Examiner has not presented any
evidence that the ‘the Pad++ references specifically teach wherein the Pad++
browser was designed to operate on PDAs’” and “[t]o the contrary, the
Pad++ references provide a mountain of evidence that the Pad++ browser
was specifically designed to operate on a desktop computer or workstation.”
(Appeal Br. 25.) Contrary to Patent Owner’s arguments, Pad++ Tour
expressly states that “[y]our whole desktop could be zoomable” and “[t]his
seems especially attractive for systems which have small screens, such as
handheld computers (i.e. PDA’s).” (P. 141.)
Second, Patent Owner argues the following:
Pad++ was never implemented on a mobile device, PDA,
or mobile phone. . . . Ben Bederson acknowledged in his
deposition, “I didn’t actually do it” (run Pad++ on a PDA), and,
“Certainly the code itself didn’t run on PDAs.” The Examiner
has presented no evidence that Pad++ was implemented on any

5 MICROSOFT® COMPUTER DICTIONARY 396 (5th ed. 2002).
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PDA, nor any evidence of anyone ever attempting to implement
Pad++ on a PDA, or that the references provide an
implementation of the Pad++ browser on a mobile device.
(Appeal Br. 25; see also Reply Br. 16–17.) Similarly, Patent Owner argues
that:
Ben Bederson testified that (1) he never implemented Pad++ on
a PDA; (2) the Pad++ code did not run on a PDA; (3) he was
not familiar with the technical capabilities and amount of
memory available by PDAs at the time (1995 or 1999); and (4)
the target platform was any computer that could run Linux and
X graphics system . . . .
(Appeal Br. 26.) However, the Bederson Deposition6 also states the
following:
Q. Could Pad++ have run on PDAs?
A. At that time, in 1995? I think technically, it would
have been a challenge to work well, that is with the smooth
zooming one of the goals of Pad++, because that was a much
slower processor that would be used in those PDAs.
(Ex. G, 180:19–25 (emphasis added).)
. . .
So my answer would be conceptually, yes, it should run.
It’s a general purpose computer system. Practically speaking, it
could well be difficult to make it actually run because of
limitations, limitations of those devices at the time, but I don’t
have any more information to know how easy or hard it would
have been to get it to run.
(Ex. G, 181: 9–16 (emphasis added).) Accordingly, while Professor
Bederson testifies that while “it would have been a challenge to work well,”

6 Professor Bederson, a computer science faculty member, is the lead author
for five of the “Pad ++” prior art references, which are technical
publications. See supra note 1.
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he further testifies that “conceptually, yes, it [Pad++] should run” because
“[i]t’s [the PDA] a general purpose computer system.” As recognized by the
Supreme Court, “[a] person of ordinary skill in the art is also a person of
ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007). Accordingly, one of ordinary skill in demonstrating
“ordinary creativity” would experiment with the technical features, such that
Pad++ could run on a PDA or mobile phone.
Third, Patent Owner argues that “[t]he lack of motivation to combine
Pad++ with a PDA or mobile phone is further supported by the testimony of
Scott Forstall, who is the co-developer of the iPhone’s user interface and
who worked closely with Steve Jobs during development of the iPhone user
interface” and “Mr. Forstall testified in the litigation that there were
challenges in designing a web browser that could bring the entire Internet to
a mobile phone.” (Appeal Br. 27; see also Reply Br. 17.) The Forstall
Deposition state that following:
Q. So what challenges did you face in designing a
web browser that could bring the entire real Internet to a mobile
phone?
A. The mobile phone is relatively small compared to a
computer . . . . And so one challenge had to do with content
that was created for a window size significantly different from a
mobile phone.
A second challenge we faced was designing a touch
interface. We were designing the iPhone to work based on
your finger touching, and that’s not what the Internet in general
had been designed around.
. . .
There were challenges related to the performance of the
processor on a mobile device.
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The speed of the data connection on a mobile device was
slower than the general speed on a computer, especially when
the computer was plugged into the Internet.
. . .
The amount of memory we had had in the iPhone was
less than the amount of memory in a computer.
(Ex. H, 42:24 to 44:6 (emphases added).) Again, as recognized by the
Supreme Court, “[a] person of ordinary skill in the art is also a person of
ordinary creativity, not an automaton.” KSR, 550 U.S. 398 at 421.
Accordingly, one of ordinary skill in demonstrating “ordinary creativity”
would experiment with the technical features (e.g., window size, touch
interface, performance of processor, speed to data connection, and memory),
such that Pad++ could run on a mobile device (e.g., iPhone). Moreover,
Pad++ Tour expressly states that “[y]our whole desktop could be zoomable”
and “[t]his seems especially attractive for systems which have small screens,
such as handheld computers (i.e. PDA’s).” (P. 141.) As such, even if Patent
Owner is correct there is a “lack of motivation” to combine Pad++ with a
mobile phone (e.g. Apple iPhone), Apple, Nokia, and Palm are cumulative
references.
Fourth, Patent Owner argues that “[a] PHOSITA could not have
implemented Pad++ on any PDA or mobile phone available by June, 2001,
including the Nokia Communicator, Palm VII, or Apple Newton” and points
to the Wolf Declaration for support. (Appeal Br. 29; see also Reply Br. 18.)
The Wolf Declaration (Ex. B) states the following:
The zooming interface requirements of Pad++ were to
support real-time animations of at least 20,000 objects at a
frame rate of 10 frames per second. Pad++ also used floating
point coordinates to speedy a zoom range of 14 orders of
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magnitude. Bederson further notes that scalable fonts such as
Microsoft Window’s TrueType fonts were not suitable.
(Ex. B, ¶ 40 (citations omitted).)
Testing with the processor enabled also demonstrates
how limited the HTML capabilities of the Pad++ browser were.
The Pad++ browser would have been completely unusable on a
desktop PC in 2000-2001. Rendering of commercial Web
pages was abysmal. Without even considering that the
animation frame rate would have been on the order of 100 times
too slow on the fastest PDA, the browser itself would have been
even more unusable on a PDA.
(Ex. B, ¶ 46.) Similarly, Patent Owner also has performed testing to
determine “performance for a text-only demo Web page” and “[t]esting of
window zooms with Pad++,” using the “Requirements” and “Zooming
interface requirements” as disclose in a Pad++ reference,7 and points to
paragraphs 102–107 of the Howard Declaration for such test results, which
are characterized by “changes in zoom levels [being] large and unpredictable
and continued after the mouse button was released” and “large lags would
make the window zooming option totally unusable.” (Appeal Br. 32.) Thus,
Patent Owner argues, “[a]s supported by substantial fact-based evidence, the
combined teachings of references would have suggested to a PHOSITA that
the resulting combination would have been completely unusable.” (Id.
at 34.) Again, as recognized by the Supreme Court, “[a] person of ordinary
skill in the art is also a person of ordinary creativity, not an automaton.”
KSR, 550 U.S. at 421. Accordingly, one of ordinary skill in demonstrating

7 Ben Bederson & Jon Meyer, Implementing a Zooming User Interface:
Experience Building Pad ++, 28 SOFTWARE–PRACTICE & EXPERIENCE
1101–35 (1998).
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“ordinary creativity” would experiment with the parameters listed in the
“Requirements” or “Zooming interface requirements” in order to achieved
optimal results, rather than strictly adhering to such requirement to achieve
an “unusable” result. Moreover, Pad++ Tour expressly states that “[y]our
whole desktop could be zoomable” and “[t]his seems especially attractive
for systems which have small screens, such as handheld computers (i.e.
PDA’s).” (P. 141.) As such, even if Patent Owner is correct that the Nokia
Communicator 9000, Apple MessagePad, and Palm VII, are “unusable,”
Apple, Nokia, and Palm are cumulative references.
Fourth, Patent Owner agues the following:
The rendered text using the text rendering techniques used by
Pad++ would also be unreadable for many, if not most page
views. Examples of the rendering of several popular Web
pages using Pad++ and simulating a screen resolution of
320x240, which corresponds to the resolution of the Apple
Newton . . . The text is clearly unreadable at a zoom level of
100%, and zooming in does not improve it much, as
demonstrated on the following zoom in on a portion on aol.com
. . .
(Appeal Br. 35.) Similarly, Patent Owner agues that “[e]ven if Pad++ could
have been implemented on the Nokia Communicator 9000, Apple
MessagePad, and Palm VII, the text rendering speed would have been orders
of magnitude too slow to be useable, and most of the text would have been
unreadable, even when zoomed in at 300%.” (Id. at 36; see also Reply
Br. 22–26.) Again, Pad++ Tour expressly states that “[y]our whole desktop
could be zoomable” and “[t]his seems especially attractive for systems
which have small screens, such as handheld computers (i.e. PDA’s).”
(P. 141.) As such, even if Patent Owner is correct that the Nokia
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Communicator 9000, Apple MessagePad, and Palm VII, are “unusable,”
Apple, Nokia, and Palm are cumulative references.
Fifth, Patent Owner argues
In contrast to Pad++, which unequivocally was not designed to
operate on a PDA, the PocketPiccolo.NET framework was
designed specifically for PDAs and mobile phones running
Microsoft’s Pocket PC operating system. These PDAs had
processors that were approximately 27 times or more times
faster than the Apple Newton processor. Even so, the
performance of applications using the PocketPiccolo.NET were
limited by the processor limitations of PDAs, as explicitly
acknowledged by Bederson.
(Appeal Br. 39; see also Reply Br. 26–30.) Accordingly, Patent Owner
further argues the following:
A PHOSITA with any experience whatsoever in developing
software to operate on a PDA prior to June, 2001 would
immediately recognize the impossibility of implementing a
usable version of Pad++ on a PDA such as Nokia
Communicator 9000, the Apple Newton, and the Palm VII
following the principles and teachings of the Pad++ references,
would have had no motivation to even attempt to implement
Pad++ on any of these devices, nor have any expectation of
success.
(Id. at 41.) However, as discussed previously, Professor Bederson testified
that “[s]o my answer would be conceptually, yes, it [Pad++] should run”
because “[i]t’s [the PDA] a general purpose computer system.” (Ex. G, 181:
9–16.) Moreover, Pad++ Tour expressly states that “[y]our whole desktop
could be zoomable” and “[t]his seems especially attractive for systems
which have small screens, such as handheld computers (i.e. PDA’s).” (P.
141.)
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Therefore, we agree with the Examiner that the combination of Pad++
and SVF would have rendered obvious dependent claim 2, which includes
the limitation “wherein the device comprises a mobile phone.”
Accordingly, we sustain the rejection of dependent claim 2 under 35
U.S.C. § 103(a). Independent claims 32 and 42 recite limitations similar to
those discussed with respect to dependent claim 2. Claims 33–39 and 44–51
depend from claim 32, and Patent Owner had not presented any additional
substantive arguments with respect to these claims. Therefore, we sustain
the rejection of claims 32–39, 42, and 44–51 under 35 U.S.C. § 103(a) for
the same reasons discussed with respect to dependent claim 2.

§ 103 Rejection—Pad++, SVF, and Bray
We are persuaded by Patent Owner’s arguments (Appeal Br. 48–49;
see also Reply Br. 31) that the combination of Pad++, SVF, and Bray would
not have rendered obvious dependent claim 29, which includes the limitation
“wherein the HTML-based Web content includes cascading style sheet
content defining layout and presentation attributes for the Web page.”
The Examiner found that that the XML (extensible markup language)
delivery over the Web, using the cascading style sheet (CSS) of Bray,
corresponds to the limitation “wherein the HTML-based Web content
includes cascading style sheet content defining layout and presentation
attributes for the Web page.” (Ans. 46–47.) The Examiner concluded that
“one of ordinary skill in the art would have been motivated to modify the
Pad++ zoomable Web browser to accommodate the newer extensible
markup standard, XML, along with the formatting standard CSS.” (Id. at
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47.) While the Examiner has established a prima facie case of obviousness,
the Examiner has not properly considered Patent Owner’s rebuttal evidence.
Bray relates to “Microsoft Internet Explorer 5’s promised and actual
implementation of XML.” (P. 1.) Bray explains the following:
There are a bunch of different ways to deliver XML over the
Web. . . . The right thing to do is to send the XML to a browser
with a stylesheet, today in in CSS and before too long, in XSL.
This has a bunch of advantages . . . .
(Id. (emphases omitted).) Bray explains that such advantages include
“cutting[] down on the amount of data you have to transmit,” “offloading[] a
lot of the formatting work to the browser that’s coasting along on your
under-worked Pentium desktop,” and “allowing[] you to do cool things with
the DOM [document object model].” (P. 2.)
Initially, we agree with the Examiner that a person of ordinary skill in
the art would have recognized that incorporating the known XML of Bray
having a cascading style sheet (CSS) into the known Pad++ zoomable web
browser, would improve Pad++ by providing the advantages of cutting down
on the amount of data transmitted or offloading formatting to the browser.
See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way.”).
However, to rebut the Examiner’s prima facie case, Patent Owner
submitted a Declaration under 37 C.F.R. § 1.132 of Wolf (formerly Scott
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Collins), dated July 24, 2017 (Ex. D).8 The relevant portions of the Wolf
declaration are reproduced below:
Adding support for CSS2 required a complete redesign of
the rendering engine architecture . . . . This aspect alone
required a tremendous amount of experimentation, with the
results being anything but predictable, and well beyond what
could have been implemented by a PHOSITA. Gecko had
hundreds of classes, and thousands of methods. Modifying a
method for one class often would “break” the code for another
class or method. We had dozens of people working on the code
at Mozilla, including those working including those working on
Gecko, and many more working on other aspects of what would
become the Netscape 6 browser. And these people were very
skilled.
(Ex. D, ¶ 29.)
Neither of the HTML or CSS specs define what functions
to implement. Rather, they define a complex set of interrelated
rules that must be followed to comply with the standards. It
took highly skilled teams for each of Microsoft, Mozilla, and
Opera several years to implement HTML 4/4.01 and CSS2. To
assert a PHOSITA could do the same without undue
experimentation is just plain wrong.
(Ex. D, ¶ 30.)
Implementing HTML 4/4.01 was exceedingly difficult and
frustrating, and required an extraordinary level of
experimentation. It was made that much more difficult by the
inclusion of CSS 2 and the CSS box model, which is inherently
tied to a proper implementation of HTML 4/4.01. CSS was not

8 Wolf has “extensive experience working with HTML, Cascading Style
Sheets (CSS), Web browser rendering engines and Web browsers gained
from . . . work experience at Netscape, Mozilla.org, and SourceForge, Inc.”
and “was a member of the core team that developed the Mozilla
“Gecko” Rendering engine. (Ex. D, ¶ 1 (emphases in original).)

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something you could merely add to an existing browser. In
fact, when Netscape tried to implement CSS in Netscape 4 it
did so by internally translating CSS rules into snippets of
JavaScript. Needless to say, this was not a viable approach.
Microsoft, even with its hordes of developers working on IE,
also had difficulty with CSS, as evidenced by the Web
Standards Project (WaSP), which published IE’s Top 10 CSS
Problems in November 1998.
(Ex. D, ¶ 66.)
In view of Wolf’s statements that: (i) “[a]dding support for CSS2
required a complete redesign of the rendering engine architecture” and
“[t]his aspect alone required a tremendous amount of experimentation”; (ii)
“[i]t took highly skilled teams for each of Microsoft, Mozilla, and Opera
several years to implement HTML 4/4.01 and CSS2”; (iii) “[i]t took highly
skilled teams for each of Microsoft, Mozilla, and Opera several years to
implement HTML 4/4.01 and CSS2”; and (iv) “[i]mplementing HTML
4/4.01 was exceedingly difficult and frustrating, and required an
extraordinary level of experimentation” and “[i]t was made that much more
difficult by the inclusion of CSS 2 and the CSS box model, which is
inherently tied to a proper implementation of HTML 4/4.01,” one of
ordinary skill in the art could not have combined the cascading style sheet
(CSS) content of Bray with the Pad++ zoomable browser, due to
technological difficulties. The Examiner has not provided any commentary
with respect to adequacy of Patent Owner’s declaration evidence, which is
legal error. See In re Alton, 76 F.3d 1168, 1174 (Fed. Cir. 1996) (“the
summary dismissal of the declaration, without an adequate explanation” is
error).
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Accordingly, we are persuaded by Patent Owner’s argument as
follows:
It would have been well-outside the capabilities of a PHOSITA
to add CSS support to Pad++, there would be no motivation to
attempt to do so, and no expectation of success. Additionally,
CSS could not merely be added to an existing browser.
(Appeal Br. 48–49; see also Reply Br. 31.)
Therefore, we do not agree with the Examiner that the combination of
Pad++, SVF, and Bray would have rendered obvious dependent claim 29,
which includes the limitation “wherein the HTML-based Web content
includes cascading style sheet content defining layout and presentation
attributes for the Web page.”
Accordingly, we do not sustain the rejection of dependent claim 29
under 35 U.S.C. § 103(a).

Other Pending Rejections
We do not reach the rejections of claims 1–28, 32–39, 42, and 44–51
under 35 U.S.C. § 103(a) as unpatentable over various combinations of
Pad++, SVF, VML, Nokia, Palm, and Newton. Affirmance of the rejections
discussed previously renders it unnecessary to reach the remaining
rejections, as all of pending claims have been addressed and found
unpatentable. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not
reaching additional obviousness rejections).
Moreover, for the rejection of claims 1–29 under 35 U.S.C. § 103(a),
we do not reach the issue of whether claims 1–29 are patentably distinct over
cancelled claims 30, 31, 40, 41, 43, 52, 55, 59, 72 and 75.
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We do not sustain the rejections for claim 29 under 35 U.S.C. § 103(a)
as being unpatentable over various combinations of Pad++, SVF, VML,
Nokia, Palm, Newton, and Bray for the same reasons discussed previously
with respect to the rejection of dependent claim 29 under 35 U.S.C. § 103(a)
as being unpatentable over Pad++, VLM, Nokia, and Palm.

DECISION
The Examiner’s decision rejecting claims 1–28, 32–39, 42, and 44–51
under 35 U.S.C. § 103(a) is affirmed.
The Examiner’s decision rejecting claim 29 under 35 U.S.C. § 103(a)
is reversed.
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-IN-PART

dm

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PATENT OWNER:
Irell & Manella LLP
840 Newport Center Dr., Ste. 400
Newport Beach, CA 92660

THIRD PARTY REQUESTER:

NOVAK DRUCE & QUIGG LLP
1000 Louisiana Street, 53rd Floor
Houston, TX 77002