Ex Parte Atkin

Board of Patent Appeals and Interferences

Feb 13, 2008

10378379 (B.P.A.I. Feb. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEVEN EDWARD ATKIN
____________________

Appeal 2007-3200
Application 10/378,3791
Technology Center 2100
____________________

Decided: February 13, 2008
____________________

Before JOSEPH L. DIXON, ALLEN R. MACDONALD, and
JEAN R. HOMERE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1 through 3, 5 through 9, 11 through 15, 17 through 21, 23, and 24.

1 Filed Mar. 03, 2003. The real party in interest in this appeal is International
Business Machines, Corp.
Appeal 2007-3200
Application 10/378,379

2
Appellant has canceled claims 4, 10, 16 and 22. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
Appellant’s Invention
Appellant invented a method, system, and computer program product
for automatically displaying an image embedded in a bi-directional
hypertext markup language (HTML) document in a desired location within
said document. The invention is intended to automatically displace the
image from the location where it is embedded in the document (logical
location) to the location where the user desires the image to be displayed
(visual location) in the document. (Spec. 1, 18.)
Particularly, a directional attribute is assigned to the embedded image
by associating thereto a sentinel indicating in the bi-directional document the
visual location where the image is to be displayed. A bi-directional
algorithm subsequently processes the sentinel to place the image in the user
designated location within the formatted HTML document. (Spec. 16-17.)
Independent claim 1 is illustrative of the invention, and it reads as
follows:
1. A method of automatically placing images in a visual location
in a displayed bi-directionally formatted HTML document the image
being embedded in the bi-directionally formatted HTML document in
a logical location, the logical location being a location where a user
embeds the images, the visual location being a location where the user
desires the embedded images to be displayed in the bi-directionally
formatted document, the method comprising the steps of:

Appeal 2007-3200
Application 10/378,379

3
embedding the images in the logical location in the bi-directionally
formatted HTML document;

assigning a directional attribute to each image embedded into the bi-
directionally formatted HTML document, the assigned directional
attribute for associating a sentinel with each embedded image and for
enabling insertion of the sentinel in the bi-directionally formatted
document during processing, each sentinel for marking a visual
location of an associated embedded image;

processing the bi-directionally formatted HTML document using a bi-
directional algorithm for automatically placing each inserted sentinel
in a visual location;

placing each image in the visual location marked by an associated
sentinel; and

displaying the bi-directionally formatted HTML document.

The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Nick Dallett, DHTML Localization on the Windows Update Site, pp.
1-11, Oct. 1999.

The Examiner rejected the claims on appeal as follows:
Claims 1 through 3, 5 through 9, 11 through 15, 17 through 21, 23,
and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Dallett.

Appeal 2007-3200
Application 10/378,379

4
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
1. Dallett discloses a method and system for allowing web
developers to design dynamic HTML web sites that can flexibly translate bi-
directional documents (from English to Arabic or Hebrew, vice-versa)
without having to redesign the websites. (P. 1.)
2. As depicted in Figures 2 through 4, Dallett discloses the use of
the DIR attribute in the tag of the Arabic and Hebrew (BiDi)
HTML code underlining the website to achieve a mirror image of the
equivalent English website, and vice versa. Such translations to BiDi
languages causes the resulting BiDi documents to be displayed as flowing
from right to left (RTL) unlike the English documents that flow from left to
right (LTR). (PP. 2-4.)
3. Dallett further discloses that once the direction of such
documents including the images embedded therein have been changed to
flow from LTR or RTL, a string filter script is subsequently used in the
webpage to dynamically rotate the images embedded therein based on the
rendering mode being used. (P. 4-5.)

Appeal 2007-3200
Application 10/378,379

5
PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
The Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17-18,
148 USPQ 459, 467 (1966), stated that the following factual inquiries
underpin any determination of obviousness:
Under § 103, [1] the scope and content of the prior art are to be
determined; [2] differences between the prior art and the claims
at issue are to be ascertained; and [3] the level of ordinary skill
in the pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is
determined. Such (4) secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented. As
indicia of obviousness or nonobviousness, these inquiries may
have relevancy.
Where the claimed subject matter involves more than the simple
substitution one known element for another or the mere application of a
known technique to a piece of prior art ready for the improvement, a holding
of obviousness must be based on “an apparent reason to combine the known
Appeal 2007-3200
Application 10/378,379

6
elements in the fashion claimed.” KSR Int’l v. Teleflex, Inc., 127 S. Ct.
1727, 1740-41, 82 USPQ2d 1385, 1396 (2007). That is, “there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” Id., 127 S. Ct. at 1741, 82 USPQ2d at
1396 (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006)). Such reasoning can be based on interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art. KSR, 127 S. Ct. at 1740-41, 82
USPQ2d at 1396.

§ 103 ANALYSIS
Claims 1, 7, 13 and 19
Claims 1, 7, 13, and 19 require in relevant part assigning a directional
attribute to each image embedded in a bi-directionally formatted HTML
document by associating with said image a sentinel inserted in the document
to mark the visual location of the image. (Claims Appendix.) Appellant
argues that Dallett does not teach the cited limitation. Therefore, Appellant
submits that Dallett does not render the cited claims unpatentable. (App. Br.
4-6.)
The Examiner finds that Dallett teaches the cited limitation as
assigning a directional attribute tag (DIR) to a document in order to
associate a direction sentinel (RTL/LTR) to the document including an
Appeal 2007-3200
Application 10/378,379

7
image embedded therein. Further, the Examiner finds that Dallett’s DIR
attribute in combination with a disclosed string filter script results in
displaying the embedded image in a visual location in the document. The
Examiner therefore concludes that Dallett renders the claims unpatentable.
(Ans. 8.)
The issue before us is whether Dallett renders claims 1, 7, 13, and 19
unpatenable under 35 U.S.C. § 103(a). Particularly, does Dallett’s
disclosure of using a DIR attribute and a string filter script in a website teach
associating a sentinel with an image to mark the visual location of the image
in a bi-directionally formatted document? We answer this question in the
affirmative.
As set forth in the Findings of Fact section above, Dallett discloses
using a DIR attribute as part of the HTML code underlining a website
translated into Arabic and Hebrew (“BiDi languages”) in order to obtain the
mirror image of an English document, and vice-versa. (FF 2.) Further,
Dallett discloses that once the flow of the document including an image
embedded therein has changed from LTR to RTL, a string filter script is
used to rotate the position of said image as desired by the user (FF. 3.) We
agree with the Examiner that such teaching is sufficient to reasonably meet
the claimed limitation of a directional sentinel that indicates where in the
document the image is to be displayed. Dallett explicitly teaches an image
embedded on the left side of a BiDi document is automatically re-positioned
to the right side of the document, as desired by the user following the
Appeal 2007-3200
Application 10/378,379

8
execution of a LTR command in the underlining HTML text. One of
ordinary skill in the art would have readily recognized that moving an
embedded image from one side of a document to be displayed in another
side of the document, as specified by a user, amounts to moving the
embedded image from a logical location to a visual location as claimed.
Further, the ordinarily skilled artisan would have also recognized that
applying the string filter script to change the direction of the image
reasonably suggests or teaches applying a directional sentinel to the image to
thereby position it as desired. Appellant’s argument that Dallett’s document
is not a bi-directionally formatted HTML document (Reply Br. 2) is
unavailing. Dallett explicitly discloses translating the content of a BiDi-
document (i.e. written in a bi-directional language, e.g. Hebrew or Greek) by
modifying the underlining HTML codes in order for the document to be
displayed as flowing from LTR to RTL. (FF 2 and 3.) We further agree
with the Examiner that Appellant has merely alleged that Dallett does not
teach the claimed limitation without actually showing any error in the
Examiner’s prima facie case of obviousness based on Dallett’s teachings. In
our view, Appellant’s allegation of error without actually making a showing
of such is insufficient to persuasively rebut the Examiner’s prima facie case
of obviousness.
It follows that Appellant has not shown that the Examiner erred in
concluding that Dallett renders independent claims 1, 7, 13, and 19
unpatentable.
Appeal 2007-3200
Application 10/378,379

9

Claims 2, 3, 5, 6, 8, 9, 11, 12, 14, 15, 17, 18, 20, 21, 23 and 24
Appellant alleges that Dallett does not teach the limitations of the
cited claims, and therefore it does not render these claims unpatentable.
(App. Br. 6, 7.) However, beyond these mere allegations, Appellant has not
even attempted to show any deficiencies in the portions of Dallett upon
which the Examiner relied to reject the cited claims. Such allegations are
insufficient to rebut the Examiner’s prima facie case of obviousness against
the cited claims. A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.
See 37 C.F.R. § 41.37(c)(1)(vii). On this record, we therefore conclude that
Appellant has not shown that the Examiner erred in concluding that Dallett
renders dependent claims 2, 3, 5, 6, 8, 9, 11, 12, 14, 15, 17, 18, 20, 21, 23
and 24 unpatentable.

SUMMARY
Appellant has not shown that the Examiner erred in concluding that
claims 1 through 3, 5 through 9, 11 through 15, 17 through 21, 23, and 24
are unpatentable under 35 U.S.C. § 103(a) over Dallett.

DECISION
We affirm the Examiner’s decision rejecting claims 1 through 3, 5
through 9, 11 through 15, 17 through 21, 23, and 24.
Appeal 2007-3200
Application 10/378,379

10
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Appeal 2007-3200
Application 10/378,379

11
Dixon, Administrative Patent Judge, concurring.
From my review of the present administrative record, I agree with
Appellant that the teachings of the Dallett reference are different than those
as disclosed in Appellant's Specification. Additionally, Appellant at page 2
of the Specification teaches that:
a bi-directional algorithm does not assign bi-directional attributes to
images or icons embedded in documents. Nor do icons or images
inherit the base directionality of text blocks in which they are
embedded. Consequently, embedded icons or images in a stored bi-
directionally formatted document are displayed or printed in their
logical order. That is, if when the document is created, and icon is
placed at a particular location in a paragraph of that document, the
icon will remain in that particular location when the document is
displayed on a screen or printed although the words around the icon
may have changed position. (Spec. 2: ll.18-29).

From my review of the teachings of Dallett, I do not find that Dallett
expressly teaches or suggests the modification of the tag or an association of
additional information with the image. I find Dallett teaches an association
of an individual tag to an HTML element and not an association
or assignment to each individual image. Dallett teaches a similar end result
of manipulation of a bi-directional document with images, but with use of
additional processing in the rendering of the page or document rather than a
manipulation of the coded document.
From the Examiner’s position at page 4 of the Answer, it is clear that
the Examiner is relying upon the rendering process to assign positions to
Appeal 2007-3200
Application 10/378,379

12
image data rather than assigning attributes to the image itself. Furthermore
the Examiner states that Dallett does not specifically teach each sentinel with
each image. Yet, the Examiner concludes that Dallett suggests that each
image in a document can have its own script with its own sentinel with the
sentinel itself having a bearing on an image’s position. I find the Examiner's
position to be conclusory in light of the above admission that the one to one
correspondence with a sentinel to an image does not exist in Dallett.
Therefore, I find the Examiner’s rationale to be over reaching
reasonableness in the application of Dallett alone to the claimed invention.
With this distinction noted, I do not find corresponding limitations in
the language of independent claim 1 with respect to assigning a directional
attribute to each image tag embedded in the bi-directionally formatted
HTML document. (See Spec. figures 7B and 7C).
With the teachings of Dallett with respect to a document with a
singular image, I find that Dallett teaches assigning a directional attribute to
each image embedded in the directionally formatted HTML document.
Since there is only one directional attribute and one image there is a one to
one correspondence with the image and the attribute, which I find to meet all
the limitations recited in independent claim 1 in this limited situation.
Therefore, for different reasons, I concur in affirming the rejection of
independent claim 1. In the limited situation with a single image and giving
independent claim 1 its broadest reasonable interpretation, I find that Dallett
anticipates independent claim 1. While this is, in effect, a holding that claim
Appeal 2007-3200
Application 10/378,379

13
1 is anticipated by Dallett under 35 U.S.C. § 102(b), affirmance of the 35
U.S.C. § 103 rejection is appropriate, since it is well settled that a disclosure
that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable
under 35 U.S.C. § 103, for "anticipation is the epitome of obviousness."
Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984). See also In re
Fracalossi, 681 F.2d 792, 794 (CCPA 1982); In re Pearson, 494 F.2d 1399,
1402 (CCPA 1974). Thus, I would sustain the Examiner's rejection of
appealed claim 1 under 35 U.S.C. § 103.
Similarly, I would sustain the rejections of independent claims 7, 13,
and 19 since Appellant has argued these claims together as a group and has
not provided separate arguments for patentability. Similarly, Appellant
relies upon the argued deficiency in Dallett with respect to using a sentinel
as argued with respect to independent claim 1. Since, in the limited situation
above, I find no deficiency in the application of Dallett to the claimed
invention, I would similarly sustain the rejection of all of the dependent
claims which do not have separate arguments for patentability. Therefore, I
would sustain the rejection of claims 1-3, 5-9, 11-15, 17-21, 23, and 24.

Appeal 2007-3200
Application 10/378,379

14

pgc

IBM CORPORATION (VE)
C/O VOLEL EMILE
P. O. BOX 162485
AUSTIN, TX 78716