Ex Parte Albornoz et al

Board of Patent Appeals and Interferences

Mar 24, 2010

10600021 (B.P.A.I. Mar. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JORDI ALBORNOZ, AVIJIT CHATTERJEE,
PAUL R. CHMIELEWSKI, LEE D. FEIGENBAUM,
CHRISTINE A. GREV, KYLE L. HENDERSON,
LONNIE A. McCULLOUGH, and CALE T. RATH
____________

Appeal 2009-005129
Application 10/600,021
Technology Center 2100
____________

Decided: March 24, 2010
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
JEAN R. HOMERE, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 5-15, 18-25, 27, 30, and 32-37, which are all the
claims remaining in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
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We affirm.

Invention
Appellants claim methods, systems, and computer-readable storage
media for managing data object annotations. See Abstract.

Representative Claim
1. A method for exchanging information between entities
on a network comprising:
identifying a plurality of annotatable data objects manipulated
by a plurality of applications on the network;
providing a set of annotation structures, each associated with
one or more of the annotatable data objects and each defining
attributes of one or more user interfaces for manipulating annotations
for the annotatable data objects, wherein the one or more user
interfaces comprise at least one graphical user interface, based on an
associated annotation structure;
providing one or more transforms for use in transforming
annotations structures into graphical user interfaces; and
providing, via an annotation management system on the
network, the one or more user interfaces, wherein elements of each
user interface are dependent on the attributes defined by an associated
one of the annotation structures and wherein the elements are
configured for user input corresponding to the manipulating of the
annotations, wherein providing the at least one graphical user
interface comprises transforming the associated annotation structure.
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Prior Art
Kadel 2002/0184401 A1 Dec. 5, 2002
Gupta 6,956,593 B1 Oct. 18, 2005

Examiner’s Rejections
Claims 1, 6-15, 18-25, 27, 30, and 32-37 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Gupta.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gupta and Kadel.

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1, 15, and 30. See 37 C.F.R.
§ 41.37(c)(1)(vii).

FINDINGS OF FACT
Gupta
Gupta describes a system by which annotations may be associated
with data objects by means of a client computer 15 (Fig. 1) and an interface
module 152 that presents a graphical user interface (GUI). Col. 11, l. 59 -
col. 12, l. 13.
A user may, for example, use the GUI to add a new annotation using
dialog box 280 (Fig. 7). Col. 12, l. 56 - col. 13, l. 6.
Annotation server 10 (Fig. 1) communicates with the client
computers, in addition to managing annotation meta data store 18 and
annotation content store 17. Col. 3, ll. 59-62.
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Annotation server 10 (Fig. 1) also maintains data structures as
exemplified by annotation entry 180 (Fig. 4). The annotation entry structure
contains fields having data that define particular characteristics of annotation
entry 180. Col. 7, ll. 27-39.

PRINCIPLES OF LAW
Claim Interpretation
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). During prosecution
before the USPTO, claims are to be given their broadest reasonable
interpretation, and the scope of a claim cannot be narrowed by reading
disclosed limitations into the claim. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Our reviewing court has
repeatedly warned against confining the claims to specific embodiments
described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (en banc).

Anticipation
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).

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ANALYSIS
Claim 1
The Examiner finds instant claim 1 to be anticipated by Gupta, as set
forth in the Answer at pages 3 and 4, and amplified at pages 12 to 16.

I
Appellants acknowledge that the Examiner reads the claimed “set of
annotation structures” on the data structures as depicted (annotation entry
180) in Figure 4 of Gupta. Appellants argue, however, that the annotation
entry structures do not define user interface attributes as claimed. According
to Appellants, the data structure described by Gupta contains fields that
merely store annotation data that has been created by a user via the GUI, and
is in no way indicative of how a GUI is generated. Reply Br. 3.
Gupta discusses property fields 202 (Fig. 4), which are contained in
annotation entry 180, in material at column 9.
User-defined property fields 202 are one or more user-
definable fields that allow users (or user interface designers) to
customize the annotation system. Examples of such additional
property fields include a “reference URL” property which
contains the URL of a web page used as reference material for
the content of the annotation; a “help URL” property containing
the URL of a help page which can be accessed concerning the
content of the annotation; a “view script” property containing
JavaScript which is to be executed whenever the annotation is
viewed; a “display type” property, which gives the client user
interface information about how the annotation is to be
displayed; etc.

Gupta col. 9, ll. 51-62.
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Gupta thus discloses that the annotation structures contain data that
can at least provide URLs to the GUI, provide JavaScript to be executed
when the annotation is viewed, and provide information to the GUI about
how the annotation is to be displayed. We are therefore not persuaded that
the annotation structures described by Gupta fail to define “attributes of one
or more user interfaces” for manipulating annotations for the annotatable
data objects as claimed.

II
Appellants also submit that Gupta does not disclose “providing one or
more transforms for use in transforming annotations [sic] structures into
graphical user interfaces.”
The Examiner finds that Gupta discloses that the annotation structures
may be stored in relational database format (e.g., in annotation meta data
store 18; Fig. 3), and must be transformed to HTML format for rendering
and display at the client computer 15 by the Web browser 153. Ans. 15-16.
Appellants’ claim 1 does not specify where the “one or more
transforms” may reside, what form the transform(s) may take, to what extent
the transform(s) may be involved in the overall “transforming” of the
structures into graphical user interfaces, or to what extent the graphical user
interfaces may be “transformed” by the structures. User interface 152
(Gupta Fig. 3) is a “transform” for all that claim 1 requires, as are any of the
structures between the client Web Browser 153 and store 18 (e.g., ABE
module 132 or HTTP Services module 131). See Gupta col. 6, ll. 18-28 and
l. 52 - col. 7, l. 18.

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Claim 15
Claim 15 recites “generating a graphic user interface based on one of
the annotation structures,” a limitation that we have addressed in our review
of the rejection of claim 1. Claim 15 recites, in addition, retrieving “or more
annotation structures associated with the data object and dependent, at least
in part, on at least one credential of a user initiating the request, wherein the
at least one credential comprises a role of the user.” Appellants argue that
the “Add New Annotation” dialog box described in column 12 of Gupta
does not disclose the claimed “retrieving” step. App. Br. 13.
However, the Examiner finds that (Ans. 16), according to Gupta, the
annotation entry structures are associated with sets dependent in part on the
role of the user, such as “instructor,” “assistant,” or “student” sets.
Gupta describes a set identifier 198 (Fig. 4) that identifies one or more
sets to which annotation entry 180 belongs. The set to which an annotation
belongs can be defined by the author of the annotation, with the sets
corresponding to annotations that relate to, for example, instructors,
assistants, or students. Gupta col. 9, ll. 15-25. Selection of a particular set
by the user can be made by from a drop-down menu or by typing in the
selection with a keyboard. Id. at col. 12, l. 60 - col. 13, l. 6. Further, the
reference describes several additional interfaces by which the user can select
the particular one or more annotation structures associated with a data object
based on set selection. Id. at col. 15, l. 64 - col. 16, l. 14; col. 16, ll. 19-30;
col. 17, l. 26 - col. 18, l. 4.
We are therefore not persuaded that Gupta fails to disclose retrieving
annotation structures dependent, at least in part, on a role of the user as
claimed.
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Claim 30
Appellants submit that Gupta does not disclose “a set of application
plug-ins, each specific to one or more of the applications and configured to
communicate with the annotation server via the application programming
interface functions.”
However, the Examiner finds that at least user interface 152 (Fig. 1)
can be considered a “plug-in” component with respect to Web browser 153.
Ans. 17. Gupta discloses that the user interface module 152 may be
incorporated into the Web browser in a graphical user interface windowing
environment. Col. 12, ll. 3-13. We agree with the Examiner that the artisan
would understand Gupta as describing an embodiment in which the user
interface constitutes a “plug-in” component, or a “set” of application plug-
ins, since there is more than one client system as depicted in Figure 1 of the
reference.
Appellants acknowledge as much, but argue that the claim requires
that the plug-ins communicate with the annotation server “via the
application program interface functions.” According to Appellants,
“[c]learly, the user interface 152 does not communicate with the annotation
server 10 via an API, but through an ABE module and an HTTP services
module.” App. Br. 15.
Appellants’ argument might appear to have prima facie merit.
However, the argument fails when we find how it is that Appellants define
an “application programming interface,” or API. “As used herein, the term
API generally refers to any set of interface functions (e.g., implementing any
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suitable inter-process protocol) that may be used to communicate between a
client computer or process and a server computer or process.” Spec. 13:1-4.
Thus, each of ABE module 151 and HTTP Services module 150 fits
squarely within Appellants’ definition of an “application programming
interface”; i.e., implementing any set of interface functions that may be used
to communicate between a client computer and a server. See Gupta col. 6,
ll. 29-32.

Conclusion
Based on the foregoing, we sustain the Examiner’s § 102(e) rejection
of claims 1, 6-15, 18-25, 27, 30, and 32-37 over Gupta. We also sustain the
§ 103(a) rejection of claim 5, because Appellants rely on the alleged
deficiencies of Gupta as applied against base claim 1 as a complete response
to the rejection.

DECISION
The rejection of claims 1, 6-15, 18-25, 27, 30, and 32-37 under 35
U.S.C. § 102(e) as being anticipated by Gupta is affirmed.
The rejection of claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Gupta and Kadel is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

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