Ex Parte Ackerman et al

Patent Trial and Appeal Board

May 24, 2016

11689370 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/689,370 03/21/2007
55459 7590 05/26/2016
PATENT POR1FOLIO BUILDERS, PLLC
P.O. BOX 7999
Fredericksburg, VA 22404
FIRST NAMED INVENTOR
Shirley S. Ackerman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
YOR920060836US 1 1764
EXAMINER
ROBINSON, MARSH ON L
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
05/26/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
Mailroom@PPBLAW.com
Tripp@PPBLAW.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIRLEY S. ACKERMAN, SHEILA E. ALLEN,
MIKED. HOCKER, JAMES G. MCLEAN, and
CLIFFORD A. PICKOVER
Appeal2014-005035
Application 11/689,370
Technology Center 2100
Before JEFFREY A. STEPHENS, NATHAN A. ENGELS, and
JOHN D. HAMANN, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 1-20. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is identified as International Business Machines
Corp. (App. Br. 1.)
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Application 11/689,370
Claimed Subject Matter
The claimed invention generally relates to reference validation in
word processor documents. (Spec., Title.) Claim 1, reproduced below, is
illustrative:
1. A method for supporting links within a document
containing text, the method comprising:
identifying representations embedded within a word
processor document of links to sources external to the word
processor document, the word processor document produced
using a word processor program running on a computing
system and configured to create, edit and display both text and
hyperlinks within the word processor document;
identifying a current validity status automatically for
each identified link representation during creation of the word
processor document, at an initial time of publication of the
word processing document in electronic form and paper form
and at a later time after initial publication, the validity status
comprising accuracy of the link representation, functionality of
the link representation, accessibility of the external sources and
content of the external sources;
expressing the identified current validity status of one or
more of the identified link representations using aspects of the
document other than the identified link representations; and
providing notification to an author and readers of the
word processor document of the current validity status.
Rejections
Claims 1-20 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. (Final Act. 2-3.)
Claims 1-3, 8, 10, 12, 13, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Bates et al. (US 2002/0133514 Al; published Sept.
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Application 11/689,370
19, 2002) ("Bates") and Yoshimura et al. (US 2002/0169753 Al; published
Nov. 14, 2002) ("Yoshimura"). (Final Act. 3-7.)
Claims 4---6 and 11 stand rejected under 35 U.S.C. § 103(a) as obvious
over Bates, Yoshimura, and Hennings et al. (US 7,168,034 B2; issued Jan.
23, 2007) ("Hennings"). (Final Act. 7-9.)
Claim 7 stands rejected under 35 U.S.C. § 103(a) as obvious over
Bates, Yoshimura, and Ronkainen et al. (US 2008/0034294 Al; published
Feb. 7, 2008) ("Ronkainen"). (Final Act. 9-10.)
Claims 14--16 and 20 stand rejected under 35 U.S.C. § 103(a) as
obvious over Bates, Yoshimura, and Smith (US 2007 /0022116 A 1;
published Jan. 25, 2007). (Final Act. 10-14.)
Claim 9 stands rejected under 35 U.S.C. § 103(a) as obvious over
Bates, Yoshimura, and Prakash (US 6,931,597 B 1; issued Aug. 16, 2005).
(Final Act. 14.)
Claim 17 stands rejected under 35 U.S.C. § 103(a) as obvious over
Bates and Brill et al. (US 2005/0071766 Al; published Mar. 31, 2005)
("Brill"). (Final Act. 14--16.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner erred (App. Br. 5-17; Reply Br. 2-15). We address
the issues raised by Appellants' arguments in tum.
Rejection under 35 U.S. C. § 112, second paragraph
The Examiner concludes claim 1 is unclear because it recites a current
validity status is identified at an initial time of publication of the word
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processing document in electronic and paper form and at a later time after
initial publication. (Final Act. 2.) Appellants contend "[p]ublication is
defined and understood by one of skill in the art as the act of bringing before
the public or the state or fact of being published," citing dictionary.com.
(App. Br. 6.) Appellants also contend "the specification clearly states in
paragraph [0019] an 'initial time that a given document is published in either
electronic or paper form.'" (App. Br. 6.)
The Examiner finds "it is reasonable to assume that the identification
of validity status could be occurring at any time given that it occurs during
creation of the document, at a time of its publication, and at a later time
period." (Ans. 4.) The Examiner reasons that "'at an initial time' and 'at a
later time' could constitute a number of time periods, particularly given that
the claim language recites publication of the document in both electronic and
paper form." (Id.)
Although we disagree with the Examiner that claim 1 could be
construed to require identification of validity status at any time, we agree
that the particular times recited in the claim are unclear. In particular, it is
unclear whether the initial time of publication of the word processing
document in electronic form and paper form, as recited in claim 1, is (1) the
time the document is made publicly available in one form, either electronic
or paper, (2) the time the document has been made publicly available in both
forms, or (3) whether there is an initial time of publication in each form and
there must be an identification of validity status at each of those times as
well as in each form at a later time after initial publication in that form.
As the Examiner notes (see Ans. 4), Appellants argue in the Appeal
Brief that claim 1 requires:
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identifying a current validity status automatically for each
identified link representation at three different and distinct time
periods, during creation of the word processor document, at an
initial time of publication of the word processing document in at
least one of electronic form and paper form and at a later time
after initial publication.
(App. Br. 9 (emphasis added).) Appellants further contend:
One of skill in the art can tell when an article is being written
before publication and when that article is initially published in
either paper or electronic format. This is a definite period of
time for any given document or publication. A document is not
initially published multiple times but once. The document can be
published multiple times and in multiple formats, but one time
and one format is first. This first time and first format is readily
determined. The claimed invention provides for determining the
validity status for identified links at this fixed, readily available
time.
(App. Br. 7 (emphases added).) Claim 1 does not, however, explicitly recite
that initial publication is in either or at least one of electronic form and
paper form. (See also Ans. 4--5.) Indeed, Appellants' argument in the Reply
Brief that the prior art "does not disclose publication in both electronic and
paper form" (Reply Br. 7) contradicts Appellants' arguments in the Appeal
Brief that the initial publication is in one form or the other. Appellants do
not explain the contradiction or persuasively argue that only one of the
possible interpretations of the claim is reasonable. See Ex Parte Miyazaki,
89 USPQ2d 1207, 1211 (BP AI 2008) (precedential) (during prosecution,
claim language is indefinite if it is "is amenable to two or more plausible
claim constructions").
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner erred in rejecting claim 1 under
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35 U.S.C. § 112, second paragraph, as indefinite. Thus, we sustain the
rejection of claim 1, and, for the same reasons, the rejection of claims 2-20,
which are not argued separately (see App. Br. 6-8).
Rejections under 35 U.S.C. § 103(a)
As to the obviousness rejections, we are not persuaded by Appellants'
arguments, except as to claim 17. For claims 1-16 and 18-20, we adopt as
our own the findings, conclusions, and reasons set forth by the Examiner in
the action from which this appeal is taken and in the Answer (see Ans. 7-
12). We highlight and address specific arguments and findings for emphasis
as follows.
Claims 1-8, 10-13, 18, and 19
Appellants argue the Bates URL checker does not verify the
accessibility of a given external source or the functionality of a link
representation. (App. Br. 9; Reply Br. 8.) We are not persuaded.
A preponderance of the evidence supports the Examiner's finding that
Bates teaches verifying functionality of a link representation and
accessibility of the external sources, including in paragraphs 11-14, 23-26,
and 47-52 of Bates. (Ans. 9.) In particular, we note Bates teaches the
following in paragraph 25:
The URL checker 20 then transmits (at block 108) an HTTP GET
request to a web server 8a, b, c, to access the web page referenced
in the hypertext link 16a, b. If (at block 110) the web page is
received in response to the GET request, then the URL checker
20 scans (at block 112) the received web page to determine
instances of context terms in the web page. The URL checker 20
then determines (at block 114) whether the web page includes a
sufficient number of instances of context terms to satisfy a
predetermined context term threshold or qualifying threshold.
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We agree with the Examiner that using the hypertext link to test whether the
web page may be accessed verifies the functionality of the link and
accessibility of the external source. (See Ans. 8-9 (citing Bates i-fi-f 11-14,
23-26, 47-52.) Appellants do not provide persuasive argument or evidence
to the contrary.
Appellants also argue the URL checker in Bates can be invoked in
two ways: similar to a spell check and when a recipient attempts to view the
document in a viewer. (App. Br. 9.) According to Appellants, Bates does
not teach identifying a current validity status automatically for each
identified link representation at three different and distinct time periods,
namely (1) during creation of the word processor document, (2) at an initial
time of publication of the word processing document in at least one of
electronic form and paper form, and (3) at a later time after initial
publication. (Id.) Appellants agree Bates teaches using the URL checker
during creation/editing, but argue that if invoking the URL checker when
loading the document into the viewer is considered after publication, then
there is no disclosure of checking at the time of publication. (Reply Br. 7.)
We are not persuaded by Appellants' arguments as to the three time
periods for identifying the validity status. Paragraphs 37 and 38 of Bates, in
addition to teaching the URL checker may be invoked when an author
invokes a spell checker and is included in a viewer program for checking
links when a target audience views the document, also teaches "the URL
checker may be invoked when the author attempts to transmit or load the
document to make available to the target audience" (Bates i137). (See also
Bates i124; Ans. 9.) We agree with the Examiner that invoking the URL
checker when an author attempts to make the document available meets the
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limitation of identifying the validity status at an initial time ofpublication,
as claimed. 2
Appellants next contend Bates does not teach expressing the identified
current validity status of one or more of the identified link representations
using aspects of the document other than the identified link representations,
as recited in claim 1. (App. Br. 9.) In particular, Appellants argue the
highlighted URL and listing of replacement URLs shown in Figure 5 of
Bates "are the URL, i.e., the link, and a display window outside the
document, i.e., outside aspects of the document." (App. Br. 9.) We agree
with the Examiner that the listing of potential replacement URLs in Bates
are not aspects outside the document because the listing contains potential
content for the document. (Ans. 10.) Appellants do not persuasively rebut
these findings. In addition, claim 1 recites that the validity status is
expressed using aspects of the document, and is not limited to document
text. Indeed, we note that construing aspects of the document in claim 1 to
include a separate window is entirely consistent with the example given in
Appellants' Specification of expressing validity status with a pop-up bubble
comprising explanatory text. (See Spec. i-fi-1 8, 31; App. Br. 3 (citing Figs. 3,
4, i-fi-15, 7, 8, 21, 30-31 as support forthe "expressing" step ofclaim 1).)
Appellants also dispute the Examiner's finding that Bates teaches
providing notification to an author and readers of the word processor
2 Appellants' argument in the Reply Brief that Bates "does not disclose
publication in both electronic and paper form" (Reply Br. 7) is waived
because Appellants do not show good cause for contradicting the argument
in the Appeal Brief that claim 1 requires identifying validity status "at an
initial time of publication of the word processing document in at least one of
electronic form and paper form" (App. Br. 9). See 37 C.F.R. § 41.41(b)(2).
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document of the current validity status, as recited in claim 1. Appellants
argue the Examiner attempts to link author and readers into a general
category of "users," and argue the author is a user of the program that
creates the document rather than a user of the document that reads, accesses,
or uses the document in order to obtain the information, data, or opinions
contained in the document. (App. Br. 9-10.)
The Examiner finds (Ans. 10), and we agree, that Bates teaches
providing notification of link validity status to readers by including the URL
checker in a viewer program "to check URLs when the target audience
selects the document to load into the viewer program" (Bates i-f 38) and
"alert the reader to possible incorrect hypertext links" (id.). Appellants do
not persuasively explain whether it is notification to the author or reader that
is allegedly not provided in Bates, but we note the teachings in paragraph 38
of Bates directly follow the teachings in paragraph 37 that the author may
invoke the URL checker. Thus, we are not persuaded by Appellants'
argument Bates does not teach providing notification to an author and
readers of the word processor document of the current validity status.
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) as obvious over Bates and Yoshimura. Thus, we sustain
the rejection of claim 1, and, for the same reasons, the rejection of claims 2,
3, 8, 10, 12, 13, 18, and 19, which are not argued separately (App. Br. 8).
Appellants argue claims 4--7 and 11 are patentable for the same
reasons as claim 1 (App. Br. 9-10, 12-13). Thus, we sustain the rejections
under 35 U.S.C. § 103(a) of claims 4--6 and 11 as obvious over Bates,
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Yoshinmra, and Hennings, and claim 7 as obvious over Bates, Yoshimura,
and Ronkainen.
Claim 9
With respect to claim 9, Appellants argue Prakash does not cure the
deficiencies argued with respect to claim 1. (See App. Br. 15.) We are not
persuaded of error on this basis because, as discussed above, we sustain the
rejection of claim 1.
Appellants also recite the limitations of dependent claim 9 and state
"[t]here is no such disclosure in Prakash," (id.), without persuasive
explanation. We are not persuaded by Appellants' argument, and,
accordingly, we sustain the rejection of claim 9 under 35 U.S.C. § 103(a) as
obvious over Bates, Yoshimura, and Prakash.
Claims 14--16 and 20
Appellants argue the rejection of claim 15 is in error for the same
reasons as claim 1, and that Smith does not cure the alleged deficiencies.
(See App. Br. 13-14.) We are not persuaded of error on this basis because,
as discussed above, we sustain the rejection of claim 1.
Appellants also contend "Smith modifies the actual filename and does
not modify graphical representations, e.g. color, of the filenames as
displayed in a windows-based environment as in the claimed invention."
(App. Br. 14.) We agree with the Examiner, however, that Smith teaches
modifying a graphical representation, e.g. color, of filenames in teaching
highlighting file names in different colors. (Ans. 12 (citing Smith i-f 20, Figs.
4A--4B).)
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Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner erred in rejecting claim 15 under
35 U.S.C. § 103(a) as obvious over Bates, Yoshimura, and Smith. Thus, we
sustain the rejection of claim 15, and, for the same reasons, the rejection of
claims 14, 16, and 20, which are not argued separately with particularity
(App. Br. 14).
Claim 17
Independent claim 17 recites, among other things, appending the word
processor document to include initial content representations comprising all
content of each external source. Appellants argue Bates does not teach
appending the word processor document to contain all content of each
external source, and Brill only teaches the use of hash functions in client-
based web crawling. (App. Br. 16-17.) The Examiner responds that
paragraph 29 of Bates teaches the disputed appending limitation. Having
reviewed paragraph 29, which teaches appending modified URLs to a URL
variation list, we agree with Appellants that the cited portion of Bates does
not teach appending the word processor document to include initial content
representations comprising all content of each external source, as recited in
claim 17.
Accordingly, we do not sustain the rejection of claim 17 under
35 U.S.C. § 103(a) as obvious over Bates and Brill.
CONCLUSION
We affirm the Examiner's decision to reject claims 1-20 under
35 U.S.C. § 112, second paragraph, as indefinite.
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We atlirm the Examiner's decision to reject under 35 U.S.C. § 103(a)
as obvious (1) claims 1-3, 8, 10, 12, 13, 18, and 19 over Bates and
Yoshimura; (2) claims 4--6 and 11 over Bates, Yoshimura, and Hennings; (3)
claim 7 over Bates, Yoshimura, and Ronkainen; ( 4) claims 14--16 and 20
over Bates, Yoshimura, and Smith; ( 5) claim 9 over Bates, Yoshimura, and
Prakash.
We reverse the Examiner's decision to reject claim 17 under
35 U.S.C. § 103(a) as obvious over Bates and Brill.
DECISION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision to reject
claims 1-20. See 37 C.F.R. § 41.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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