Ex Parte 6389437 et al

Board of Patent Appeals and Interferences

Aug 30, 2010

90008069 (B.P.A.I. Aug. 30, 2010)

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.
90/008,069 06/29/2006 6389437 440261 3418
30954 7590 08/30/2010
LATHROP & GAGE LLP
2345 GRAND Boulevard
SUITE 2400
KANSAS CITY, MO 64108
EXAMINER
STEELMAN, MARY J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/30/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ION SYSTEMS, INC.
____________

Appeal 2010-005437
Reexamination Control No. 90/008,069
United States Patent 6,389,437 B2
Technology Center 3900
____________

Before RICHARD TORCZON, KARL D. EASTHOM, and KEVIN F.
TURNER, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-005437
Reexamination Control 90/008,069
Patent 6,389,437

2
Patent owner (Appellant) appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 17-23, 25-29, 31-53, and 62-77.2 (Br. 2.)3
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm.

STATEMENT OF THE CASE
This proceeding arose from the patent owner’s request for ex parte
reexamination of U.S. 6,389,437 B2.
The ‘437 Patent4
The ‘437 patent describes “a computer system for automatically
converting a scrollable electronic document, including text, graphics, tables
and combinations, from a scrollable format to non-scrollable format . . . .”
(Abstract.) The system allows a user to “automatically recalculat[e] the
number of displayed columns in response to a user change in size of
displayed font . . . [and] automatically reformat[] displayed material in
response to a user change in size of displayed font.” (Col. 4, ll. 35-39.)
Conversely, while the “[p]rior art often permits the viewer to adjust
the size(s) of the type font” (col. 3, ll. 1-2), “the number of columns is
prescribed by the web page author and cannot be modified by the viewer”
(id. at ll. 9-11). In these prior art systems, “[a]s the viewer overrides the

2 Patent owner, Appellant, Ion Systems, Inc., is the real party in interest for
this appeal and assignee of record by assignment from the inventor, Everett
W. Stoub, of U.S. 6,389,437 B2, titled “System for Converting Scrolling
Display to Non-Scrolling Columnar Display” (issued May 14, 2002).
3 Appellant’s Amended Appeal Brief (filed July 7, 2009).
4 The ensuing description constitutes findings of fact referenced below as
“D1.”
Appeal 2010-005437
Reexamination Control 90/008,069
Patent 6,389,437

3
publisher’s font selections . . . . lines of text can easily contain too few
characters.” (Id. at ll. 11-15.)
The Exemplary Claim, References, and Rejection
Exemplary claim 17 on appeal reads as follows:
17. A system for generating a source in a non-scrolling format for display
in a display window having a viewer-selectable dimension using a processor
comprising:

a screen page formatting mechanism configured to form a screen page
dimensioned to fit the display window;

a column formatting mechanism configured to determine a number of
columns having a width characteristic that can fit within the display
window, to format the screen page for the number of columns, to
automatically determine another number of columns having another
width characteristic that will fit within the screen page upon selection
of a viewer selected font characteristic and the viewer-selected
dimension, and to reformat the screen page for the other number of
columns; and

a display page formatting mechanism configured to format the source as a
display document having a base font characteristic and a plurality of
display pages each non-scrollably displayable for the screen page and
to dynamically reformat the source for a plurality of other display
pages upon selection of the viewer selected font characteristic and the
viewer-selected dimension, each of the other display pages non-
scrollably displayable for the screen page.

(Br. Claims App’x (emphasis added to indicate disputed limitation, original
emphasis and parenthetical information indicating amendments omitted, line
formatting supplied).)

The Examiner relied upon the following prior art references:
Orr US 5,895,476 Apr. 20, 1999

Appeal 2010-005437
Reexamination Control 90/008,069
Patent 6,389,437

4
ENEWS Reference Manual (Ion Systems Inc. Manual) (1997).5

Claims 17-23, 25-29, 31-53, and 62-77 stand rejected under 35 U.S.C.
103(a) as obvious based on the ENEWS Reference Manual and Orr.
Issue
Appellant and the Examiner disagree over whether Orr suggests a
column formatting mechanism configured to automatically determine
another number of columns upon a viewer selected font characteristic as
required by the independent claims. (See App. Br. 8-21.)

ADDITIONAL FINDINGS OF FACT
Orr’s Teachings
O1. Orr discloses reformatting electronic media using “the concept of
dividing a media region.” (Col. 29, ll. 16-17.) Orr’s system divides a page
into vertical regions of text and images. For example, “Child 1” and “Child
2” can be rearranged on a page into vertical regions. (See Figs. 24, 26A-H,
27A-E; col. 29, l. 16 to col. 32, l. 30.)
O2. Orr describes parent regions which may consist of any number
(e.g., two-way, three-way, and N-way media) of horizontal (e.g., top and
bottom, Fig. 26B) and/or vertical (e.g., left and right - Fig. 26A) child
regions. (Col. 31, l. 16 to col. 32, l. 30.) These parent and child regions are
also described as different components of content, design, and/or media

5 After an initial dispute with the Examiner over the publication date, the
patent owner established it by petition and a subsequent decision granting
same by the Office. (See “Decision Granting Petition Under 37 C.F.R. §§
1.181 & 1.515 (c) (mailed July 30, 2007).)
Appeal 2010-005437
Reexamination Control 90/008,069
Patent 6,389,437

5
trees. (See e.g., col. 19, ll. 34-37; col. 28, ll. 58-63; col. 29, ll. 19-26; col.
30, ll. 46-50.)
A child (or parent) region may include text and/or a picture. (Figs.
23A-23C; col. 27, l. 66 to col. 28, l. 17.) “[I]f this body text were to extend
into a second page or to be split across columns, this body text would be
represented by different media components in a media tree.” (Col. 28, ll. 45-
48.) Orr also describes optimal placement of a dividing line and/or “options
for treating text/content of a child that flows to a different page (e.g., keep
second child on initial page, move second child to end of flow on another
page), no page break . . . .” (Col. 30, ll. 35-41.)
“A media division may be viewed as a set of properties of a particular
component describing a set of rules that dictate a layout for the children of
that component. A media division may include any number of different
properties and may divide an extent of a component in a variety of
manners.” (Col. 29, ll. 27-31.)
O3. “Generally, a user may change one or all of the content, design
and media aspects of the composition and have the composition be
automatically adjusted by the application program 12.” (Col. 6, ll. 64-67.)
O4. Orr’s stated purpose follows:
“Therefore, it would be desirable for a user to a be able to author a
document once, and then have a system to adapt the document automatically
for changes in the design or output media while maintaining the
relationships between the content elements of the document.” (Col 2, ll. 43-
47.)
O5. Orr’s system generally operates as follows:
Appeal 2010-005437
Reexamination Control 90/008,069
Patent 6,389,437

6
Automatic layout and formatting may be also be
performed using built-in graphic design expertise.
Embodiments of the present invention will automatically fit
content to the selected design (newsletter – modern, European,
wired, traditional[] etc.), represent it in the selected media view
(printed page, screen HTML[] etc.), position text and graphics,
change type specifications, jump stories, add pages, size
graphics, or make other needed adjustments to the layout. If the
user changes text or graphics schemes in the document, or even
the overall design, the fit is automatically recalculated and
necessary adjustments are made to format and/or style. These
intelligent design features make it possible to deliver
sophisticated design expertise to non-design professionals in
“unbreakable documents”. These features empower users to
make design decisions based on what is appropriate and “looks
good”, rather than being constrained by their particular level of
design or tools expertise.
The concept of “fit” also refers to every aspect of how a
document is rendered to a particular medium. For example,
various properties of content elements help to express the
design of that element or of the overall document. These
properties affect the layout/format of an element, although may
not necessarily affect the overall layout of the whole document.
In other words, even though these properties may not affect the
overall “fit” of a document, the [sic] are nonetheless an aspect
of design. Examples for text are: font size, type face, italic,
bold, underline drop capitals, . . . and inter-character/line
spacing. Examples for images are . . . . Examples for general
content are: borders, orientation, and serial/parallel arrangement
of subcomponents.
(Col. 5, l. 57 to col. 6, l. 22.)

ANALYSIS
Appellant’s arguments focus on independent claims 17, 31, 51, 62,
and 70 without distinction. (Br. 8.) Accordingly, claim 17 is selected to
represent the claims on appeal. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2010-005437
Reexamination Control 90/008,069
Patent 6,389,437

7
To support the argument that Orr fails to suggest “limitations
specifically directed to the automatic adjustment of the number of
columns upon viewer manipulation of font” (Br. 8), Appellant argues that
the Examiner’s interpretations of 1) column, 2) viewer and 3) automatically
are unreasonable. (Br. 17-19.)
Adjustment of Columns Based on Font Size
The Examiner relied, inter alia, upon Orr’s concept of fit. (See Ans.
23.) Orr’s
concept of “fit” . . . refers to every aspect of how a document is
rendered to a particular medium. For example, various
properties of content elements help to express the design of that
element or of the overall document. These properties affect the
layout/format of an element . . . . Examples for text are: font
size, type face, italic, bold, underline drop capitals . . . .
Examples for general content are: borders, orientation, and
serial/parallel arrangement of subcomponents.
(O5 (emphasis supplied).)
Appellant’s Brief quotes this same paragraph. (Compare Br. 11 with
O5.) With respect to this paragraph, Appellant does not dispute that Orr
discloses or suggests columns: “Though the Examiner has indicated that
‘parallel arrangement of subcomponents’ is the same as columns, the
examiner has failed to recognize that, even if true, this nevertheless is not in
any way the same as automatic adjustment of a number of columns upon a
viewer manipulation of font, as claimed.” (Br. 11 (emphasis added).)
On the other hand, Appellant argues that Orr’s “positioning . . . of
different elements (e.g., pictures and text) beside one another does not
constitute one or two columns.” (Br. 18 (emphasis supplied).) Appellant
also argues that Orr only teaches “fixed dimensions” in which the amount or
Appeal 2010-005437
Reexamination Control 90/008,069
Patent 6,389,437

8
scaling of content is fit into fixed or defined media regions allotted for such
content, and/or the overall media size or number of pages is adjusted. (Br.
10.) Appellant does not clearly indicate why this alleged “fixed dimension”
aspect of Orr precludes columns or adjustment of the number thereof. (See
id.) It is assumed that Appellant implies that a requirement for fixed
dimensions in Orr’s documents precludes a variable number of columns
based on a font variation.
Appellant’s arguments fail to demonstrate that Orr does not disclose
or suggest a manipulation of font to obtain a different number of columns.
According to Orr’s “concept of ‘fit,’” upon which the Examiner relies, “[i]f
the user changes text or graphics schemes in the document . . . the fit is
automatically recalculated.” (O5.) Orr also explains that “if this body text
were to extend into a second page or to be split across columns, this body
text would be represented by different media components in a media tree.”
(O2.) In other words, Orr relates changing text as an option which requires a
recalculation of a document’s fit, and one such fit involves a different
number of columns – i.e., a “split across columns” as opposed to a second
page extension.
Therefore, Appellant’s argument’s notwithstanding, and assuming for
the sake of argument that the claimed columns consist solely of text, Orr at
least suggests columns consisting solely of text, even if some embodiments
comprise columns which include both text and images. (See also O1, O2.)
In support of this finding, in another specific example, Orr’s Figure 6
discloses two content divisions A and B in a single column which are
depicted as consisting solely of text. A similar comparison of Orr’s Figure
Appeal 2010-005437
Reexamination Control 90/008,069
Patent 6,389,437

9
26A to its companion Figure 26B signifies a design change of layout from
two columns of “Child 1” and “Child 2” into one column of the same
components. Despite Appellant’s related assertion that Figure 10 does not
disclose columns (Br. 18), a comparison of Figure 10 to Figure 11 represents
a design change layout of one textual column to two textual columns in two
different brochures (even though images are also within the columns).
Even if content or media, represented as a “parent” in Orr, has a fixed
size format as Appellant argues, Orr specifically describes breaking such a
parent into any number of different vertical divisions (i.e., columns) in
which each division represents a component or child (i.e., into N-way
vertical divisions). (O2.) As mentioned supra, Orr also describes keeping
columns of content on a particular page, as opposed to allowing the content
to run to the next page. (O2.) As such, Orr is not limited to fixed formats
and reasonably discloses or teaches breaking a parent component or region
into any number of columns, textual or otherwise, contrary to Appellant’s
arguments.
Appellant’s allegations that the Examiner failed to determine the
scope and content of the prior art and the differences between the claims and
the prior art, and that the rejection is “contrary to Graham, KSR, and the
PTO Guidelines,” are premised on Appellant’s repeated assertion that Orr
“does not disclose the automatic adjustment of the number of columns
upon viewer manipulation of font . . . .” (Br. 18.) Based on the foregoing
discussion and further discussion below, this premise lacks merit.
The relevant inquiry is not what Orr discloses, but what Orr
reasonably suggests to skilled artisans. After specifying the claim
Appeal 2010-005437
Reexamination Control 90/008,069
Patent 6,389,437

10
differences with respect to ENEWS and citing numerous supporting
passages in Orr to teach or suggest the disputed limitations (Ans. 4-8), the
Examiner found motivation in Orr to suggest modifying ENEWS - i.e. to
create “an automatic . . . layout of content into intelligent dynamic document
templates . . . .” (Ans. 8-9 (citing Orr at col. 2, ll. 57-60).)
The Examiner’s rationale of creating an automatic layout of content is
further bolstered by the prior art problems known to skilled artisans. “Under
the correct analysis, any need or problem known in the field of endeavor at
the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 421 (2007). That is, according to the ‘437 patent, when a
user adjusted the font size in prior art systems, “too few characters” in a
column of text resulted because the format in a given document could not be
overridden (i.e., the number of columns was fixed.) (D1.) Carried to its
logical extreme, this example of increasing the font size in the prior art
systems eventually redounds to a document having only one (large) word per
line in each column. (See D1.) Of course, such a result is absurd. As a
known problem, however, it suggests a reason for making a desired change.
See KSR, 550 U.S. at 421.
As such, a skilled artisan, cognizant of the prior art problem and
armed with Orr’s general suggestion, if not disclosure, of providing vertical
and other layout changes based on variables including font sizes (O2, O5),
logically would have changed the number of words per line to accommodate
font size increases in order to avoid the absurd logical extension of the prior
art problem - i.e., one word per column. Of course, this solution would have
Appeal 2010-005437
Reexamination Control 90/008,069
Patent 6,389,437

11
led to wider columns. In turn, wider columns necessarily would have
dictated a fewer number of possible columns per page. In addition, Orr
specifically mentions overcoming prior art “unbreakable documents” (O5),
such as the known prior art documents having a fixed number of columns.
Viewer
After quoting an argument made during reexamination before the
filing of the Brief, Appellant states that
the patent owner has amended the claims and provided a
definition for the amended term “viewer” that does not include
the publisher. Nevertheless, according to the examiner, “claim
language does not distinguish between the user being the initial
publisher and consumer . . . .”
Since the patent owner amended “user” to include
“viewer” and explicitly defined “viewer” as not including the
publisher, the examiner’s . . . insistence that claim language
does not distinguish between publisher and consumer is absurd
and wrong. It is beyond dispute that a claim term may not be
given a definition that is contrary to a definition provided
during prosecution . . . .
(Br. 19 (referring to arguments and amendments filed Sept. 3, 2008).)
Appellant’s arguments are not persuasive. Appellant’s underlying
argument (as quoted on page 19 of the Brief as presented earlier during
reexamination), merely pointing out that Orr discloses a publisher while the
claims recite a viewer, lacks a clear line of demarcation. For example, a
publisher typically views the document being published. “The problem in
this case is that the appellants failed to make their intended meaning
explicitly clear.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
Moreover, even if Appellant’s underlying argument amounts to a clear
definition (not required by or found in the specification) as Appellant’s
Appeal 2010-005437
Reexamination Control 90/008,069
Patent 6,389,437

12
argument implies, Appellant provides no legal justification for the
proposition that such an argument, presented during an ongoing
reexamination, properly serves to limit the claims.
Ordinarily, during reexamination, “the PTO must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification.” In re Bass, 314 F.3d 575, 577
(Fed. Cir. 2002) (emphasis supplied) (citing In re Yamamoto, 740 F.2d 1569,
1571 (Fed. Circ. 1984)); see also Phillips v. AWH Corp., 415 F.3d 1303,
1317(Fed. Cir. 2005) (en banc) (Because prosecution history is “an ongoing
negotiation . . . rather than the final product of that negotiation, it often lacks
the clarity of the specification and thus is less useful for claim construction
purposes.”).6
Appellant provides insufficient evidence, if any, demonstrating that
the term “viewer,” as interpreted in light of the specification without an
improper incorporation of limitations therefrom, precludes a publisher as a
viewer.7 Moreover, Orr’s system allows a viewer other than (and including)
the original publisher to alter the format of an authored document. That is,

6 Compare Ex parte Papst-Motoren, 1 USPQ2d 1655, 1656 (BPAI 1986)
(holding that in the reexamination of expired patents it is error to follow the
normal rule of reexamination claim construction announced in Yamamoto)
with Yamamoto.
7 See Phillips, 415 F.3d at 1323 (“To avoid importing limitations from the
specification into the claims, it is important to keep in mind that the
purposes of the specification are to teach and enable those of skill in the art
to make and use the invention and to provide a best mode for doing so.”); cf.
In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (reversing for reading claim too
narrowly); In re Priest, 582 F.2d 33 (CCPA 1978) (reversing for
interpolating limitations from the disclosure).
Appeal 2010-005437
Reexamination Control 90/008,069
Patent 6,389,437

13
while a user or “publisher” may initially author a document, the publisher as
a viewer, or alternatively, any other user as a viewer, can thereafter
manipulate the authored document to change its layout/format. (See O4.) In
other words, Orr’s system allows an unskilled user, whether such a user is
the original publisher or a subsequent “viewer,” to automatically transform
otherwise “unbreakable” documents from one format to another. (O4, O5.)
Automatically
Appellant argues that in Orr, “the user is required to select between
‘ignoring drop’ and ‘disabl[ing] drop’.” (Br. 21.) According to Appellant,
this type of “human judgment” means that “Orr’s invention is not the
automatic reformatting of a document . . . .” (Id.) Appellant also argues that
the Examiner’s interpretation of the term automatic is unreasonable because
the Examiner merely relies on the notion that any steps executed in a
computer, such as Orr’s computer, are automatic. (Id. at 20.)
These arguments are unpersuasive. As the Examiner found, Orr
discusses automatic adjustment or formatting in at least three different
passages. (Ans. 52; accord O3, O4, O5.) As indicated supra, Orr’s stated
purpose is to allow a user “to author a document once, and then have a
system to adapt the document automatically for changes in the design . . . .”
(O4.)
The responses and rejection clearly indicate that Examiner did not rely
solely on the notion that Orr’s executions must be automatic merely because
they occur on a computer. Therefore, even if the argued text “drop”
example requires some human judgment, the Examiner’s proposed rejection
and responses, discussed in part supra, show that the combination of
Appeal 2010-005437
Reexamination Control 90/008,069
Patent 6,389,437

14
ENEWS and Orr render obvious an automatic determination as set forth in
claim 17. (See also Ans. 52-53.)
Based on the foregoing discussion, we will sustain the Examiner’s
rejection of claims 17, 31, 51, 62, and 70, and also, the rejection of
dependent claims 18-23, 25-29, 32-50, 52, 53, 63-69, and 71-77, because
Appellant did not present separate patentability arguments for these
dependent claims.

CONCLUSION
Orr suggests a column formatting mechanism configured to
automatically determine another number of columns upon a viewer selected
font characteristic as required by the independent claims.
DECISION
The Examiner’s decision to reject appealed claims 17-23, 25-29, 31-
53, and 62-77 is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED

LATHROP & GAGE LLP
2345 GRAND BOULEVARD
SUITE 2400
KANSAS CITY, MO 64108