Ex Parte Battle

Board of Patent Appeals and Interferences

Oct 20, 2010

10275243 (B.P.A.I. Oct. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN ANDREW BATTLE
____________

Appeal 2009-005048
Application 10/275,243
Technology Center 2100
____________

Before JOHN A. JEFFERY, JAMES D. THOMAS, and LANCE L.
BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL 1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
The Patent Examiner rejected claims 31-60. The Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
INVENTION
The Appellant describes the invention at issue on appeal as follows.
[T]here is provided a method of facilitating the amendment of
data, said data comprising a presentation document that has
been rendered from an original document, the method
comprising marking the presentation document such that when
the presentation document is amended the original document
has corresponding amendments made thereto.
An advantage of such a method is that a user can make a single
amendment to the presentation document, without having to
return to the original document transform and re-render the
original document to see the corresponding change.
(Spec. 4.)

ILLUSTRATIVE CLAIM
31. A method of facilitating amendment of a source
document recorded in presentation-independent markup, the
method comprising:
applying at least two transformations to the source
document, each transformation implementing instructions
relating to presentation of content contained in the source
document on a particular display device to create at least a first
presentation-dependent markup document and a second
presentation-dependent markup document;
rendering the presentation-dependent markup documents
to generate at least a first rendered document and a second
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rendered document, each capable of display on a particular
device;
displaying the rendered documents;
performing an amendment to the first rendered
document; and
applying, consequent to the amendment of the first
rendered document, corresponding changes to the source
document, the first presentation-dependent markup document,
the second presentation-dependent markup document, and the
second rendered document.

REJECTIONS
Claims 32 and 59-60 stand rejected under 35 U.S.C. § 112, ¶ 2, as
being indefinite.
Claims 31-56 and 59-60 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by U.S. Patent No. 6,230,171 B1 ("Pacifici").
Claims 57-58 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pacifici.

REJECTION UNDER § 112, ¶ 2
The issue before us is whether the Examiner erred in concluding that
claims 32, 59, and 60 are indefinite for reciting "said documentation link" is
"inaccessible to a user viewing the first rendered document."

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FINDINGS OF FACT
Claim 32 recites, in pertinent part, the following limitations:
"inserting at least one documentation link . . . . said documentation link
being inaccessible to a user viewing the first rendered document."
Claims 59 and 60 recite similar limitations.
The specification includes the following description.
Further, the XSL style sheet has inserted a number of comments
in the HTML document, which can be found between pairs of
tags . As will be apparent from the screen shot of
Figure 8 these comments are not displayed in the rendered
presentation document. The comments contain information
linking data-items in the transformed document to data-items in
the original document.
(Spec. 16.)
ANALYSIS
The Examiner concludes that the claimed phrase "documentation link
being inaccessible to a user viewing the first rendered document" is unclear
(Ans. 3.) This conclusion is based upon the following findings.
The claims recite documentation link being inaccessible to a
user viewing the first rendered document (last 2 lines). It is
still not clear what is meant by inaccessible to the user. It
appears that the user is able to access the link not while viewing
the document, but at least by leaving the rendered document
and displaying the source markup code having the link
separately.
(Id.)
"The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope." In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharma. Co.,
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927 F.2d 1200, 1217 (Fed. Cir.1991)). "[T]he definiteness of the language
employed must be analyzed — not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
Here, we agree with the Appellant's following explanation.
[P]age 16, lines 16-23 of the specification . . . . describes how
'comments are not displayed in the rendered presentation
document' and the 'comments contain information linking data-
items in the transformed document to data-items in the original
document'. Therefore, a documentation link may be inserted in
a rendered document which relates to a portion of the source
document, where the documentation link is not viewable or
accessible by a user viewing the rendered document.
(App. Br. 8.) In other words, after a documentation link relating to a portion
of the source document is inserted into a rendered document, the inserted
documentation link will not be visible or accessible to a user viewing the
rendered document.
The Examiner's findings are based on leaving the rendered document
and viewing source code. This is immaterial to viewing the rendered
document as required by the claims. Therefore, we conclude that the
Examiner erred in finding that claims 32, 59, and 60 are indefinite for
reciting "said documentation link" is "inaccessible to a user viewing the first
rendered document."
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REJECTIONS UNDER § 102(b) AND § 103(a)
The issue before us is whether the Examiner erred in finding that
Pacifici discloses making changes to an original source document as
specified in independent claims 31, 53, 59, and 60.

FINDING OF FACT
Pacifici includes the following description.
A shared markup system and a method are provided for
supporting Web co-browsing. Based on the hyper-text markup
language (HTML), the markup system is interoperable across
different platforms and Web browsers and provides for online
annotation, of shared HTML documents, directly within the
browser's windows. The annotations created by the markup
system are realized using HTML components that are
composed dynamically.
(Abstract, ll. 1-8.)

ANALYSIS
"It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim, and that
anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed.
Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist &
Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)).
Here, the Examiner makes the following findings.
Pacifici teaches adding annotations to a first rendered document
that is being displayed to a user, and then adding of annotations
to the markup code of the document – applying , consequent to
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the amendment of the first rendered document, corresponding
changes to the source document. These annotations are then
transferred to other copies of the document being displayed by
other users elsewhere on a computer network, by inserting the
annotations in the markup code of the documents using a
Javascript function, and then displaying or synchronizing the
views of the document them (sic) to all the remaining users -
- the first presentation-dependent markup document, the second
presentation-dependent markup document, and the second
rendered document . . . .
(Ans. 20.)
Pacifici uses HTML layers "to implement text and drawing
annotations of the shared document. A text annotation is realized by a layer
with a transparent background, into which the user typed input is directed"
(Col. 6, ll. 32-37.) This layer 314 is "positioned in the X-Y plane" at the
point in an original source document 316 "where the user decided to add a
text annotation by clicking a mouse button . . ." (Id. at ll. 38-40; see also
FIG. 3.) This layer 314 is positioned in the Z-dimension in a virtual plane
above the original source document 316 as shown in FIG. 3. (Id. at Col. 5, ll.
54-57.)
More specifically, Figure 3 of Pacifici shows the following
arrangement of HTML layers.
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Figure 3 "illustrates an arrangement of markup components in virtual planes
. . . ." (Col. 3, ll. 63-65). These markup components are used to implement
on-line annotation of shared HTML documents within a browser's window,
so as to provide uniform screen views for a plurality of members
participating in a collaborative video conference (Id. at ll. 12-32). An
original document 316 is annotated using one or more overlays, such as a
pointer overlay 312, a text/graphics overlay 314, or a highlight overlay 318
(Col. 6, ll. 60-67). The original document 316 and the overlays 312, 314,
318 together comprise an annotated shared document 310 which is sent to
each of the conference participants (FIG. 3; Col. 5, ll. 54-57; Col. 7, ll. 1-6).
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In other words, Pacifici utilizes a superposition of transparent overlays
to annotate the original source document, but the original source document
itself remains unchanged. We agree, therefore, with the Appellant's
following argument.
Pacifici does not teach or suggest that changes are made to a
source document based on any of these markup commands.
Rather, only a participant's view of the HTML shared document
is affected by the received markup commands. The source
document itself is not changed.
(App. Br. 10.)
Therefore, we conclude that the Examiner erred in finding that
Pacifici discloses making changes to an original source document as
specified in independent claims 31, 53, 59, and 60.

DECISION
We reverse the rejection of claims 32 and 59-60 under 35
U.S.C. § 112, ¶ 2. We also reverse the rejection of claims 31-56 and 59-60
under 35 U.S.C. § 102(b). Finally, we reverse the rejection of claims 57-58
under 35 U.S.C. § 103(a).

REVERSED

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