Ex Parte 6993707 et al

Board of Patent Appeals and Interferences

Sep 28, 2011

90010473 (B.P.A.I. Sep. 28, 2011)

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.
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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.
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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”?
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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.)
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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,
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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.)
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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
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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.
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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.”
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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.
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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,
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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
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SMITH HOPEN, PA
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