Ex Parte Abelow et al

Patent Trial and Appeal Board

Apr 16, 2014

90011948 (P.T.A.B. Apr. 16, 2014)

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.
90/011,948 10/07/2011 Daniel H. Abelow 10157-002RX2 2860
26980 7590 04/16/2014
Lawrence A. Aaronson
Meunier Carlin & Curfman, LLC
817 West Peachtree Street
Suite 500
Atlanta, GA 30308
EXAMINER
WORJLOH, JALATEE
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/16/2014 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 APPEALS BOARD
____________________

Ex parte WEBVENTION GROUP LLC,
Owner and Appellant

____________________

Appeal 2013-006792
Reexamination Control Nos. 90/011,948
United States Patent No. 5,251,294
Technology Center 3900
____________________

Before BIBHU R. MOHANTY, KEVIN F. TURNER, and DENISE M. POTHIER,
Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
This proceeding arose out of a third party request by Roger D. Wylie of
Kilpatrick Townsend & Stockton LLP, for ex parte reexamination of U.S. Patent
No. 5,251,294 (“the ’294 patent”) to Daniel H. Abelow, entitled Accessing,
Assembling, and Using Bodies of Information, issued October 5, 1993 and assigned
to Webvention Group LLC. The ’294 patent relates to computer-based systems for
assembling, organizing, and distributing information. Spec. 1:6-7.
Claims 1, 20, 28-33, 35, 37, 40-44, 47, 48, 51, 53, and 55 are subject to
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reexamination. December 16, 2011 Order Granting/Denying Request For Ex Parte
Reexamination 2.
Appellant, Owner, appeals under 35 U.S.C. §§ 134(b) and 306 from the
decision in the September 14, 2012 Final Rejection rejecting claims 28-33, 35, 37,
40-44, 47, 48, 51, 53, and 55 of the ’294 patent. Br. 2. Claims 1 and 20 have been
confirmed. Final Rej. 2.
The Examiner’s Answer incorporates the rejections presented in the Final
Rejection by reference. Ans. 4.
An oral hearing was held on August 14, 2013. The transcript will be made
of record in due course.
Appellant indicates that the ’294 patent is the subject of litigation and lists
various civil docket numbers. Br. 1. Requester indicates that the ’294 patent is
involved in other litigations. Request 8-10.
Owner also states the ’294 patent is the subject of another ex parte
reexamination assigned Control Number 90/012,479 that is currently appealed to
the Patent Trial and Appeals Board. Br. 1. At this time, no appeal number has
been assigned. Requester further indicates that the ’294 patent was the subject of
two reexaminations, Control Nos. 90/011,208 and 90/011,229, that were merged.
Request 4-5. These proceedings resulted in the confirmation of claims 1-8, 12-21,
28-33, 35, 37, 40-44, 47, 48, 51, 53, 55, and 78 and the cancellation of claims 58
and 64-69. October 4, 2011 Ex Parte Reexamination Certificate 2.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM the rejections of claims 28-33, 35, 37, 40-44, 47, 48, 51, 53,
and 55.

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Representative claim 28 reads as follows:
28. A computer-based method for aiding a user in accessing a body of stored
information which includes segments of related information, the method
comprising
displaying a set of labels, each label providing an abbreviated indication
of information content of a corresponding one of said segments,
said labels being displayed in an organized model reflecting relationships
among information contents of said corresponding segments,
enabling a user to point to individual labels in said model using an
electronic pointing technique, and
for each label to which said user points, displaying to the user, for
previewing, the information content of the corresponding segment.

Claims App’x, App. Br. 26.
A. Prior Art Relied Upon
The Examiner relies on the following as evidence of unpatentability:
Mimi Jones & Dave Myers, Hands-On HyperCard: Designing Your Own
Applications 302-322 (1991) (“Hands-On HyperCard”).

Danny Goodman, The Complete HyperCard Handbook Second Edition 11, 20, 21,
25, 62, 63, 92, 105-107, 129-159, 367-395, 420, 450, 529-536, 663-683, 794, 795
(1988) (“Goodman”).

B. The Adopted, Proposed Rejections
The Examiner maintains the following proposed rejections:
Reference(s) Basis Claims RAN
Hands-On HyperCard § 102(b)
28-33, 35, 43,
44, 47, 48, 51,
53, and 55
Final Rej.
10-21
Hands-On HyperCard
and Goodman 103 37, 40, and 41
Final Rej.
22-24
Hand-On HyperCard 103 42 Final Rej. 25
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II. ISSUES ON APPEAL
Based on the arguments presented, Appellant raises the following issues:
Whether the Examiner erred in rejecting independent claim 28 by finding
that Hands-On HyperCard discloses
(1) displaying a set of labels, each label providing an abbreviated indication
of information content of a corresponding one of said segments and
(2) for each label to which said user points, displaying to the user, for
previewing, the information content of the corresponding segment?

III. PRINCIPLES OF LAW
While claims are generally given their broadest possible scope during
prosecution, In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000), the
Board’s review of the claims of an expired patent is similar to that of a
district court’s review, Ex parte Papst-Motoren, 1 U.S.P.Q.2d 1655,
1655-56 (B.P.A.I. Dec. 23, 1986); see also MPEP § 2258.I.G.
(directing Examiner to construe claims pursuant to Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), during reexamination
of an expired patent).

In re Rambus Inc., 694 F3d 42, 46 (Fed. Cir. 2012).
We have held:

[I]n reexamination proceedings in which the PTO is considering the
patentability of claims of an expired patent which are not subject to
amendment, a policy of liberal claim construction may properly and
should be applied. Such a policy favors a construction of a patent
claim that will render it valid, i.e., a narrow construction, over a broad
construction that would render it invalid.

Papst-Motoren, 1 USPQ2d at 1656.
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“In determining the meaning of the disputed claim limitation, we look
principally to the intrinsic evidence of record, examining the claim language itself,
the written description, and the prosecution history, if in evidence.” DePuy Spine,
Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
(citing Phillips v. AWH Corp., 415 F3d. 1303, 1312-17 (Fed. Cir. 2005)).
Importantly, it is “error … to use the possible invalidity of those claims, if broadly
construed, as a basis for construing them narrowly.” The Saunders Group, Inc. v.
ComforTrac, Inc., 492 F.3d 1326, 1335 (Fed. Cir. 2007); Phillips, 415 F.3d at 1327
(“[W]e have certainly not endorsed a regime in which validity analysis is a regular
component of claim construction.”)

IV. ANALYSIS
A. Anticipation Rejection Based on
Hands-On HyperCard

1. displaying a set of labels, each label providing an abbreviated indication of
information content of a corresponding one of said segments

Appellant argues that Hands-On HyperCard fails to disclose “displaying a
set of labels, each label providing an abbreviated indication of information content
of a corresponding one of said segments” recited in claim 28. Br. 12. Specifically,
Appellant asserts that the planets the Examiner maps to recited “labels” cannot
labels, because they are only artwork that are copied and pasted on to a card.
Br. 12-13. Additionally, Appellant contends the “related information” of a
segment in Hands-On HyperCard correspond to the invisible button – not the
planets – and thus there is no related information corresponding the planets. Br.
13-14. We disagree.
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We construe claim terms to have their ordinary and customary meaning. See
In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Although
Appellant states that a label may be a link, Appellant does not provide us with any
citation from the disclosure that the label is limited to a link. See Br. 10.
Appellant also does not provide us with an ordinary meaning of a “label.” See Br.
10, 12-13. In our review of the disclosure, we note the Specification describes a
label in the Context Base screen 9002 as “Our Company’s Internal Contexts” or a
heading. See Spec. 24:40-22; Figs. 35A, 137. This, however, is just an example of
a label and does not exclude a picture or an image.
Given no such restriction or exclusion in the disclosure, we find an ordinary
meaning of “label” includes an object that describes or identifies something.
Therefore, we find the Examiner’s mapping of an image of planet (e.g., Saturn or
any other planet shown in Fig. 16.19) to the recited “label” in claim 28 reasonable.
Ans. 5 (citing Hands-On HyperCard 314 and referring to “[e]ach image of a
planet”), 6; Final Rej. 11-12 (citing Hands-On HyperCard 314, Figs. 16.19, and
16.21 and referring to the label as an image of each planet). That is, each image of
the planet in Hand-On HyperCard identifies its corresponding planet and thus is a
label.
Additionally, we find such an image is “an abbreviated indication of
information content of a corresponding one of the segments,” as recited. The
image of each planet is a visual indication of the planet, and the information related
to the planet is made visible when the user points to the planet. Ans. 5-6 (citing
Hands-On HyperCard 318-19). Thus, the image itself relates to and is an
abbreviated indication of other information content (e.g., the information related to
the planet) that becomes visible when the user point to the image.
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Hands-On HyperCard further discloses that this information content is “of a
corresponding one of said segments [of related information]” as recited in claim
28. Hands-On HyperCard states that buttons and fields are created and work
together to provide more information about each planet. See Hands-On HyperCard
314-15, Fig. 16.19. A button is created over each planet’s image (e.g., a label), and
thus the button and image (e.g., a visual indication) of its corresponding planet
have an association. See Hands-On HyperCard 316-317, Fig. 16.22. A field is
also created next to each planet’s image with information related to the planet (e.g.,
content such as diameter, moons, orbital period, and period of rotation), and the
collective field information (e.g., a segment of related information concerning a
planet that is part of the solar system) is stored within an information body. See
Hands-On HyperCard 316-18 (including Table 16.1), Fig. 16.23. Each segment
also contains related information to other segments, because the information about
each planet relates to the solar system as a whole. See id. Thus, we agree with the
Examiner that Hands-On HyperCard’s image of a planet is “an abbreviated
indication of information content of a corresponding one of the segments [of
related information],” which is included in “a body of stored information” as
recited in claim 28. Final Rej. 12; Ans. 5-6.
Appellant further argues that “the ‘labels’ in claim 28 correspond directly to
the information, not fields, as asserted by the Examiner.” Br. 13. Yet, claim 28
does not recite a direct relationship between each label and information. Claim 28
merely recites “each label provid[es] an abbreviated indication of information
content of a corresponding one of said segments [of related information.]” At best,
claim 28 requires the label to provide an indication of the information content
corresponding to a related information segment. Moreover, the related information
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concerns the segments (i.e., “segments of related information”) and not a
relationship between the label and information. Furthermore, there is no recitation
in claim 28 related to removing layering. Br. 13-14. Thus, Hands-On HyperCard
need not disclose these purported limitations.
Appellant also contends that the Examiner’s mapping of the planet to the
recited “label” renders Hands-On HyperCard’s “inoperative to present information
to the user,” in that the scripts are applied to a button or field – not the artwork or
planet image. Br. 14. We are not persuaded for the above-discussed reasons,
explaining how the information would be presented to the user and that presenting
such information does not destroy or render any function in Hands-On HyperCard
inoperable. Moreover, the Examiner is not proposing that the script is directly
connected to the label, but through the button and fields, information is provided to
the user. Ans. 5-6. Thus, no function in Hands-On HyperCard is being destroyed
by the Examiner’s mapping of the claim limitations. Rather, as explained above,
the label provides an abbreviated indication of information content of a
corresponding one of the segments as required by claim 28.
Appellant asserts that Hands-On HyperCard only shows coarse alignment
with labels and that pointing to empty space results in information being presented.
Br. 15. Even if true, Hands-On HyperCard discloses at least one embodiment,
where the pointer (e.g., hand cursor) is located on a planet image (e.g., Saturn) and
thus “enable[s] a user to point to individual labels . . . using an electronic pointing
technique” as recited. See Hands-On HyperCard 314, Fig. 16.19; see also Ans. 6-7
(citing Fig. 16.19).

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2. for each label to which said user points, displaying to the user, for
previewing, the information content of the corresponding segment

Additionally, Appellant contends that Hands-On HyperCard fails to disclose
the recitation, “for each label to which said user points, displaying to the user, for
previewing, the information content of the corresponding segment.” Br. 12, 16-18.
In particular, Appellant asserts that Hands-On HyperCard do not preview
information as required by claim 28, because all the information associated with
the context or all the information contained in field card associated with a script is
displayed when a pointer enters an invisible box. Br. 6, 16-17.
At the outset, we note that claim 28 does not recite the active step of
previewing as argued, but rather, “displaying to the user, for previewing, the
information content . . .” (emphasis added). This recited “previewing” step is an
intended use limitation or a function to be performed at a future time. See Oral
H’g 6-8. Given that Hands-On HyperCard can present information to the user
when pointing to the label, Hands-On HyperCard discloses the ability to preview
information.
Also, even if claim 28 requires an active step of previewing, no definition of
how an ordinary artisan would construe the phrase, “preview,” has been provided.
See Br. 16-18; see also Oral H’g 9-11. Appellant further admits that the term,
“previewing,” is not found in the disclosure, other than the claims. See also Oral
H’g 9. Appellant was also asked during oral hearing whether Owner intended to
exclude the disclosed embodiment that presents all information. See Oral Hearing
5-6, 8-11. In response, Appellant referred to Figures 35A and 137, stating that “the
idea of [claim] 28 . . . covers when you’re not presenting all of the information
associated with the segment.” Oral H’g 9 (emphasis added). Figure 35A shows
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that, when a user points cursor 422 to the first Context in the list on the left, labeled
“New Products in IC Magazine.,” eight lines of three pages of text appears on the
right in Guide window 424. Spec. 24:48-51; Fig. 35A, 137. On the other hand and
as the Examiner indicates, the disclosure includes an embodiment where the entire
text for “Editing for Content” is shown to the user. See Ans. 9 (citing Spec. Fig.
57A); see also Oral H’g 5, 8-9 (discussing Fig. 57A).
Based on the evidence of record, we find the ordinary and customary
meaning of “previewing” includes “‘an introductory or limited experience’.” See
Br. 6; see also Final Rej. 9 (citing Webster’s II New Riverside University
Dictionary 933). Applying this interpretation to Hands-On HyperCard, we agree
that displaying all information contained in planet field card associated with a
script reasonably maps to the recited “displaying to the user, for previewing, the
information content of the corresponding segment.” That is, Hands-On HyperCard
displays an introductory or limited experience about a single planet rather than
entire solar system. See Ans. 9. Additionally, the information presented is an
introductory or limited experience in that it presents limited information about a
single planet (e.g., planet name, diameter, moons and orbital period). See Hands-
On HyperCard 314, Fig. 16.19. Contrary to Appellant’s contentions (Br. 16-18),
Hands-On HyperCard thus discloses displaying, for previewing, the information
content of the corresponding segment using the ordinary meaning of the phrase,
“previewing.”
We further find some of Appellant’s arguments are not commensurate in
scope with claim 28. For example, Appellant contends that claim 28 of the ’294
patent recites “displaying labels that can be interacted with in a manner that is not
layered” and “an operation that removes the significant limitation of layering
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approach . . . .” Br. 12. Appellant also argues that claim 28 enables “dynamic
shifting and rearranging of labels[.]” Id. We find no such limitations in claim 28
and will not import into the claim recitations that are not part of the claim. See
SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
Lastly, Appellant broadly contends that the “label” mapped by the Examiner
in Hands-On HyperCard is not capable of performing the functions in claim 28.
Br. 12. We disagree for the reasons previously stated.
For the foregoing reasons, Appellant has not persuaded us of error in the
rejection of independent claim 28 and claims 29-33, 35, 43, 44, 47, 48, 51, 53, and
55 not separately argued with particularity

B. OBVIOUSNESS REJECTION BASED ON
HANDS-ON HYPERCARD AND GOODMAN

For claims 37, 40, and 41, Appellant refers back to claim 28 and argues that
Goodman fails to cure the deficiencies of Hands-on HyperCard. Br. 18-19. We
are not persuaded for the reasons previously set forth and need not address whether
Goodman cures any purported deficiency.

C. OBVIOUSNESS REJECTION BASED ON HANDS-ON HYPERCARD
For claim 42, Appellant refers back to claim 28 and argues that Hands-On
HyperCard also fails to teach or suggest the disputed limitations. Br. 19-20. We
are not persuaded for the reasons previously set forth and need not further address
what Hands-On HyperCard teaches or suggests.

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V. CONCLUSION
Appellant did not demonstrate that the Examiner erred in adopting the
rejection that Hands-On HyperCard anticipates claims 28-33, 35, 43, 44, 47, 48,
51, 53, and 55.
Appellant did demonstrate that the Examiner erred in adopting the
obviousness rejections of claims 37 and 40-42.
The Examiner’s decision to reject claims 28-33, 35, 37, 40-44, 47, 48, 51,
53, and 55 is affirmed.

VI. TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination proceeding
are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED

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FOR PATENT OWNER:

MEUNIER CARLIN & CURFMAN, LLC
817 West Peachtree Street
Suite 500
Atlanta, GA 30308

FOR THIRD PARTY REQUESTER:

KILPATRICK TOWNSEND & STOCKTON LLP
Two Embarcadero Center
Eighth Floor
San Francisco, CA 94111-3834lb