Ex Parte 6993707 et alDownload PDFBoard of Patent Appeals and InterferencesSep 28, 201190010473 (B.P.A.I. Sep. 28, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 90/010,473 03/27/2009 6993707 47966/83454 7094 21901 7590 09/29/2011 Smith & Hopen, P.A. Attn: General Patent Matters 180 Pine Avenue North Oldsmar, FL 34677 EXAMINER PEIKARI, BEHZAD ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 09/29/2011 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 FREEDOM SCIENTIFIC, INC. Appellant ___________ Appeal 2011-002975 Reexamination Control No. 90/010,473 Technology Center 3900 U.S. Patent No. 6,993,707 ____________ Before RICHARD TORCZON, SCOTT R. BOALICK, and KARL D. EASTHOM, Administrative Patent Judges. BOALICK, Administrative Patent Judge. DECISION ON APPEAL Freedom Scientific, Inc. appeals under 35 U.S.C. § 134(b) and 35 U.S.C. § 306 from the final rejection of claims 1-7. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We affirm. Appeal 2011-002975 Reexamination Control No. 90/010,473 U.S. Patent No. 6,993,707 2 STATEMENT OF THE CASE Reexamination Proceedings A request for ex parte reexamination of U.S. Patent No. 6,993,707 (the ‘707 patent) was filed on March 27, 2009 and assigned Reexamination Control No. 90/010,473. The ‘707 patent is said to be assigned to Freedom Scientific, Inc., said to be the real party in interest. Appellant’s Invention Appellant’s invention relates to a method of saving and retrieving a selected string on an HTML-based document. (Abstract.) A cursor is placed at a location on the document and the number of HTML tags are counted between the beginning of the document and the position of the cursor. (Abstract.) The count of HTML tags is saved in association with the URL of the document. (Abstract.) The Claims Claim 1 is exemplary, with minor formatting added and disputed limitations in italics: 1. A method of marking the position of a string in a document comprising the steps of: retrieving the document, establishing a cursor location in the document associated with the beginning of the string, parsing the source HTML in the document for a positional value representative of the number of HTML tags prior to the cursor location, identifying the URL of the document, and storing the positional value and the URL on a computer accessible medium. Appeal 2011-002975 Reexamination Control No. 90/010,473 U.S. Patent No. 6,993,707 3 The Rejections Claims 1-5 and 7 stand rejected under 35 U.S.C. § 102(b) as being anticipated by MacKenty (U.S. Patent No. 6,085,161). Claim 6 stands rejected under 35 U.S.C. § 103(a) as being obvious over MacKenty and Cragun (U.S. Patent No. 7,058,887). ISSUE § 102 Rejections – MacKenty With respect to independent claims 1, 4, and 7, Appellant argues that MacKenty does not teach the recitation in the preamble of “marking the position of a string in a document.” (App. Br. 12.) In particular, Appellant argues that MacKenty does not mark a “string” (App. Br. 12-13; see also Reply Br. 2-6) or mark strings in a “document.” (App. Br. 13-16; see also Reply Br. 6-9). Appellant also argues that the Examiner improperly construed the term “string.” (Reply Br. 2-3.) Appellant further argues that MacKenty does not teach the limitation “storing the positional value and the URL on a computer accessible medium.” (App. Br. 16.) In particular, Appellant argues that MacKenty does not teach “storing the . . . URL” (App. Br. 16-18; see also Reply Br. 9-12) and “storing . . . on a computer accessible medium” (App. Br. 18-20; see also Reply Br. 12-14). The following five issues are presented for resolution: 1. Does MacKenty teach a “string”? 2. Does MacKenty teach “marking . . . a string”? 3. Does MacKenty teach marking a string in a “document”? 4. Does MacKenty teach “storing the . . . URL”? Appeal 2011-002975 Reexamination Control No. 90/010,473 U.S. Patent No. 6,993,707 4 5. Does MacKenty teach “storing . . . on a computer accessible medium”? FINDINGS OF FACT MacKenty 1. MacKenty relates to “communicating by sound the contents of Web pages coded in HTML [hypertext markup language].” (Col. 1, ll. 10- 12.) An HTML page sonification apparatus 10 includes a parser 12, a reader 14 and a navigator 16. (Col. 3, ll. 11-13; fig. 1.) The parser 12 determines the structure of an HTML document to be “sonified” (i.e., HTML pages read aloud with audible cues identifying HTML tags (col. 3, ll. 8-10)). (Col. 3, ll. 13-14.) The reader 14 “sonfies an HTML document and synchronizes speech and non-speech sounds . . . .” (Col. 3, ll. 14-16.) The navigator 16 allows the user to select portions of the HTML document to be sonified. (Col. 3, ll. 16-18.) 2. HTML documents are obtained by connecting to a browser utility and requesting the HTML documents by their Uniform Resource Locator (URL). (Col. 3, ll. 34-39.) Documents coded using HTML include both plain text and markup text or HTML tags, which are not displayed to viewers. (Col. 1, ll. 15-19.) 3. The parser 12 produces a tree data structure (also referred to as a “parsed HTML document tree” (see, e.g., col. 5, l. 8)) from the HTML document. (Col. 4, ll. 38-39.) Each node represents an HTML tag and descendents of the node represent a portion of the HTML document within the HTML tag. (Col. 4, ll. 39-41.) Appeal 2011-002975 Reexamination Control No. 90/010,473 U.S. Patent No. 6,993,707 5 Character data, which is the textual part of the document between the HTML tags, are represented as leaf nodes of the tree. Character data can be split into multiple nodes of the tree at sentence boundaries, and very long sentences may be further divided into multiple nodes to avoid having any single node containing a large amount of text. (Col. 4, ll. 47-52.) 4. After the HTML document is parsed by the parser 12, the reader 14 accesses the tree data structure to sonify the HTML document. (Col. 4, ll. 59-62.) “The HTML document is read by performing a depth-first traversal of the parsed HTML document tree” that “corresponds to reading the unparsed HTML document linearly, as it was written by its author.” (Col. 5, ll. 7-10.) The reader 14 can either accesses the tree data structure from a separate memory element or a memory element provided by the reader 14. (Col. 4, ll. 62-65; see also col. 4, ll. 53-55.) The reader 14 maintains a “read cursor” as it traverses the tree data structure. (Col. 5, ll. 23-28.) The reader 14 uses the cursor to “reference . . . a particular position, or node, within the tree.” (Col. 5, ll. 23-25.) The read cursor “represents the position within the parsed HTML document tree which is currently being sonified.” (Col. 5, ll. 26-28.) 5. The reader 14 also maintains “[a] list of the most recently requested, parsed HTML tree structures and their associated read cursors . . . .” (Col. 6, ll. 47-49.) “The user can move linearly from document to document in this list, which provides the ‘history’ of visited HTML documents commonly implemented in browser software.” (Col. 6, Appeal 2011-002975 Reexamination Control No. 90/010,473 U.S. Patent No. 6,993,707 6 ll. 49-52.) As a result, “by maintaining the read cursor along with each parsed document, when a user switches to another page in the list the invention [i.e., reader 14] can continue reading a document from the position at which it stops when last reading that page.” (Col. 6, ll. 52-56.) 6. The reader 14 includes several exemplary functions (col. 9, ll. 28-32) including a “BackwardPage” function (col. 10, l. 45) in which “[t]he current document is changed to be the previous document in the list of parsed documents maintained . . . .” (col. 10, ll. 48-50). The “BackwardPage” function provides the “effect of going back to the previous document and reading from where reading of that document was last stopped.” (Col. 10, ll. 52-54.) ANALYSIS § 102 Rejections – MacKenty Appellant argues independent claims 1, 4 and 7 together as a group. (App. Br. 11.) Therefore, we select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii). With respect to the first issue, we are not convinced by Appellant’s argument (App. Br. 12-13; see also Reply Br. 2-6) that MacKenty does not teach a “string.” The Examiner found that the character data of MacKenty, i.e., the textual part of the document between the HTML tags, corresponds to the claimed “string.” (Ans. 5, 16-17; FF 3.) The Examiner interpreted a “string” as “a sequence of data bits or characters” and thus found that “the character data of MacKenty may represent text strings.” (Ans. 16.) Appeal 2011-002975 Reexamination Control No. 90/010,473 U.S. Patent No. 6,993,707 7 Appellant argues that “the ‘string’ is not a random collection of data bits and is, instead, a particular set [of] characters that the user is interested in returning to at a later time.” (Reply Br. 2.) However, under the broadest reasonable interpretation consistent with the Specification, we agree with the Examiner that MacKenty teaches a “string.” Appellant has not directed us to a particular definition of "string" in the Specification. A relevant plain meaning of “string” is “[a] connected sequence of characters, words, or other elements.” Computer Dictionary 528 (Howard W. Sams & Co., Inc., 1984). MacKenty teaches that a parser 12 produces a data tree structure from an HTML document in which character data, i.e., the textual part of the document between HTML tags, are represented as leaf nodes of the tree structure. (FF 3.) In other words, MacKenty teaches a “string” by teaching a connected sequence of characters. Accordingly, we agree with the Examiner that MacKenty teaches a “string.” With respect to the second issue, we are not convinced by Appellant’s arguments (App. Br. 13-16; see also Reply Br. 6-9) that MacKenty does not teach “marking . . . a string.” The Examiner found that a read cursor used to reference a position within a data tree structure of MacKenty corresponds to “marking . . . a string.” (Ans. 5, 17; FF 4-6.) We agree with the Examiner. As discussed previously, MacKenty teaches that a parser 12 produces a data tree structure from an HTML document in which character data are represented as leaf nodes of the tree structure. (FF 3.) MacKenty also teaches that a “read cursor” is used to reference any particular node or Appeal 2011-002975 Reexamination Control No. 90/010,473 U.S. Patent No. 6,993,707 8 position within the HTML document tree. (FF 4.) MacKenty further teaches maintaining the position of the read cursor in the parsed HTML document tree if the user switches to a different parsed HTML document tree. (FF 5.) Thus, after switching to a different page, the user can return to a previously read page and begin reading from the position of the read cursor (e.g., using the “BackwardPage” function (FF 6)). (FF 5.) In other words, because the position of the read cursor is maintained for a previously read document and the read cursor references any particular node containing character text from the HTML document (i.e., the claimed “string”), MacKenty teaches “marking . . . a string” with the read cursor. Appellant also argues that “MacKenty is simply maintaining the position at which the reading of a parsed document stopped, and that it is not ‘marking the position of a string’ in the document.” (App. Br. 13.) However, as previously discussed, since MacKenty teaches maintaining the position of the read cursor in the parsed HTML document tree, the user can “mark” the position of a page when switching to a different page. Accordingly, we agree with the Examiner that MacKenty teaches “marking . . . a string.” With respect to the third issue, we are not convinced by Appellant’s arguments (App. Br. 13-16; see also Reply Br. 6-9) that MacKenty does not teach marking a string in a “document.” The Examiner found that the HTML document of MacKenty corresponds to the claimed “document.” (Ans. 5-6; FF 3, 4.) We agree with the Examiner. Appeal 2011-002975 Reexamination Control No. 90/010,473 U.S. Patent No. 6,993,707 9 MacKenty teaches an HTML page sonification apparatus 10 including a parser 12 (FF 1) that produces a parsed HTML document tree from an HTML document (FF 3). The character data (i.e., the claimed “strings”) from the parsed HTML document tree corresponds to the character data from the HTML document. (See FF 3, 4.) MacKenty further teaches maintaining the position of the read cursor in the parsed HTML document tree if the user switches to a different parsed HTML document tree. (FF 5.) Since the character data from the parsed HTML document tree corresponds to the character data of the HTML document, MacKenty teaches marking strings in a “document” using the read cursor. Appellant argues that “[t]he ‘document’ that contains the string that is marked in the method claimed . . . is the original HTML document” but “MacKenty . . . only retains a location in a parsed tree version of the document . . . .” (App. Br. 13.) However, claims 1, 4 and 7 require marking the position of a string in a “document” and, as previously discussed, the character data from the parsed HTML document corresponds to the HTML document. The argued feature of marking "the original HTML document" is not claimed, rather, the claim requires marking the position of a string (with the string in the document) – i.e., the stored mark of this string position need not necessarily reside in the original document. Accordingly, we agree with the Examiner that MacKenty teaches marking a string in a “document.” With respect to the fourth issue, we are not convinced by Appellant’s arguments (App. Br. 16-18; see also Reply Br. 9-12) that MacKenty does not teach “storing the . . . URL.” Appeal 2011-002975 Reexamination Control No. 90/010,473 U.S. Patent No. 6,993,707 10 The Examiner found that MacKenty discloses maintaining a list of recent parsed HTML tree structures including browser information corresponding to the claimed feature of “storing the . . . URL.” (Ans. 6, 24-25; FF 2, 5.) We agree with the Examiner. MacKenty teaches that the reader 14 maintains a list of the most recently requested, parsed HTML tree structures. (FF 5.) The user can select from documents on this list “which provides the ‘history’ of visited HTML documents commonly implemented in browser software.” (FF 5.) MacKenty also teaches that HTML documents are requested by their URL using a browser utility. (FF 2.) In other words, since the reader 14 maintains a list of recently requested, parsed HTML tree structures, i.e., a “history” of HTML documents “commonly implemented in browser software” in which HTML documents are requested by their URL, MacKenty teaches “storing the . . . URL.” Appellant argues that “MacKenty is not concerned about marking strings that appear in original HTML documents for later retrieval, but instead simply maintains the parsed documents in the current session so that a user can restart the reading of a given page where it stopped.” (App. Br. 17.) Thus, Appellant argues, “this is very different than the system described and claimed . . . which creates markers that identify portions of HTML documents that can be stored, reused, and even shared later after the web content has changed.” (App. Br. 17.) However, claims 1, 4 and 7 simply recite “storing the . . . URL.” The argued feature of identifying portions of HTML documents that can be stored, reused, and even shared later after the web content has changed is not claimed. Appeal 2011-002975 Reexamination Control No. 90/010,473 U.S. Patent No. 6,993,707 11 Accordingly, we agree with the Examiner that MacKenty teaches “storing the . . . URL.” With respect to the fifth issue, we are not convinced by Appellant’s arguments (App. Br. 18-20; see also Reply Br. 12-14) that MacKenty does not teach “storing . . . on a computer accessible medium.” The Examiner found that the separate memory element for the storage of a parsed HTML tree structure corresponds to “storing . . . on a computer accessible medium.” (Ans. 6, 28-29; FF 5, 6.) We agree with the Examiner. MacKenty teaches that a parsed HTML tree structure is accessible from a memory element provided by the reader 14 or a separate memory element. (FF 4.) As described previously, MacKenty also teaches that the reader 14 maintains a list of recently requested, parsed HTML tree structures including the URL. (FF 2, 5.) Furthermore, MacKenty teaches the “BackwardPage” function in which the user can return “to the previous document and [begin] reading from where reading of that document was last stopped.” (FF 6.) In other words, the list of recently requested, parsed HTML tree structures that is accessible using the “BackwardPage” function are stored in the memory element provided by the reader 14 or the separate memory element. Thus, MacKenty teaches “storing . . . on a computer accessible medium.” Appellant argues that “the invention and claims are directed to a system that creates ‘placemarkers’ that are retained for future use, the ‘storing’ of the independent claims . . . involves writing the placemarkers to a file for later use, not simply maintaining them in memory allocated to an instance of the program.” (App. Br. 18; see also Reply Br. 12.) However, Appeal 2011-002975 Reexamination Control No. 90/010,473 U.S. Patent No. 6,993,707 12 claims 1, 4 and 7 simply require “storing . . . on a computer accessible medium.” The argued feature of writing the placemarkers to a file for later use is not claimed. Accordingly, we agree with the Examiner that MacKenty teaches “storing . . . on a computer accessible medium.” Therefore, we sustain the rejection of claim 1 under 35 U.S.C. § 102(b). Claims 2-5 and 7 were not argued separately and fall with claim 1. § 103 Rejection – MacKenty/Cragun Although Appellant nominally argues the rejection of dependent claim 6 separately (App. Br. 20), the arguments presented do not point out with particularity or explain why it is separately patentable. Instead, Appellant summarily alleges that “[c]laim 6, rejected as obvious based on MacKenty in combination with Cragun, is patentable for at least the same reasons” because “MacKenty’s method does not teach ‘storing . . . the URL’ . . . .” (App. Br. 20.) We are not persuaded by these arguments for the reasons previously discussed. DECISION The rejections of claims 1-7 are 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 cu Appeal 2011-002975 Reexamination Control No. 90/010,473 U.S. Patent No. 6,993,707 13 FOR PATENT OWNER: SMITH HOPEN, PA 180 PINE AVENUE NORTH OLDSMAR, FL 34677 FOR THIRD PARTY REQUESTER: BARNES & THORNBURG LLP 600 ONE SUMMIT SQUARE FORT WAYNE, IN 46802 Copy with citationCopy as parenthetical citation