Ex Parte Bier

Board of Patent Appeals and Interferences

Jun 14, 2007

09731912 (B.P.A.I. Jun. 14, 2007)

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for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ERIC ALLAN BIER
____________________

Appeal 2007-1105
Application 09/731,912
Technology Center 2100
____________________

Decided: June 14, 2007
____________________

Before: JAMES D. THOMAS, JOSEPH F. RUGGIERO, and
ALLEN R. MACDONALD, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2007-1105
Application 09/731,912

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-3, 5-13, 15-16, 18-21, and 23-45. We have jurisdiction under 35
U.S.C. § 6(b). On May 23, 2007, an oral hearing was conducted regarding
this appeal.
Appellant invented a system, method, and computer readable medium
for editing group-editable electronic documents (Specification 1:5-6).
Specifically, Appellant’s group editing is of layout or format. (Specification
2:16)
Representative independent claim 1 and dependent claims 34-36
under appeal read as follows:
1. A group-editable web page editing system comprising:

an element selection device that selects a portion of an
electronic document, wherein the selected portion includes at least one
of template information or formatting information stored within the
electronic document;

an editing device that determines an edit user interface and
allows editing of the selected portion through the edit user interface,
wherein the edit user interface allows editing of at least one of the
template information or the formatting information of the selected
portion; and

an updating device that replaces the selected portion with the
edited portion.

34. The system of claim 1, wherein the formatting information
comprises at least one of text, images, and formatting codes editable
by one or more authorized users, and wherein the formatting
information is distinct from editable content items of the electronic
document.
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35. The system of claim 1, further comprising a content item
edit merging device that merges a modified content item back into the
electronic document even if the template information or formatting
information of the electronic document was altered while the content
item was being modified.

36. The system of claim 1, further comprising a template edit
merging device that merges a modified item template back into the
electronic document even if the content of one or more items managed
by the item template was altered while the item template item was
being modified.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Giljum US 6,745,238 B1 June 1, 2004
(Filed Mar. 31, 2000)

Bay-Wei Chang (hereinafter Chang), In-Place Editing of Web Pages:
Sparrow Community-Shared Documents, World Wide Web conference
WWW7 , (April 1998).

The additional prior art cited by the Board is:
Skok US 2002/0091725 A1 July 11, 2002
(Filed May 12, 1998)

The Examiner rejected claims 1-3, 5-13, 15-16, 18-21, and 23-45
under 35 U.S.C. § 103(a) based on Chang and Giljum.
Appellant contends that the claimed subject matter would not have
been obvious. More specifically, with respect to claims 1, 12, and 20,
Appellant further contends that the reference disclosures do not disclose or
suggest “storing editable template information or formatting information
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within the electronic document” (Br. 3:4-5) or the selected (and edited)
portion includes “template information or formatting information”
(Br. 3:6-13).
With respect to claims 34, 38, and 42, Appellant further contends that
the reference disclosures do not disclose or suggest “the formatting
information is distinct from editable content items of the electronic
document” (Br. 7:15-19).
With respect to claims 35, 39, and 43, Appellant further contends that
the reference disclosures do not disclose or suggest “merging a modified
content item back into an electronic document under the condition where
template information or formatting information of the document was altered
while a content item was modified” (Br. 8:1-3).
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With respect to claims 36, 40, and 44, Appellant further contends that
the reference disclosures do not disclose or suggest merging “a modified
item template back into the electronic document even if the content of one or 15
more items managed by the item template was altered while the item 16
template item was being modified” (Br. 8:14-16). 17
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We affirm.

ISSUE(S)
Has Appellant shown that the Examiner has failed to establish one
skilled in the art would have incorporated editable template and format
information into Chang’s editing of Sparrow community-shared web page
documents in such a manner as to obtain “group-editable web page editing
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system … [for editing] template information or formatting information
stored within the electronic document” as required by claim 1?
FINDINGS OF FACT
1. Appellant invented a system, method, and computer readable
medium for editing group-editable electronic documents
(Specification 1:5-6). Specifically, Appellant’s group editing is of layout or
format. (Specification 2:16)
2. Appellant admits that with Sparrow, “the page author can
change the layout of such a page, or the format of its items, by reading the
page into a text editor or HTML authoring tool and making edits to the
overall page.” (Specification 2:7-9).
3. The prior art Chang reference describes the claimed
group-editable web page editing system, in the form of in-place editing of
Sparrow community-shared web page documents. (Chang’s Title, p. 1).
4. The Chang reference further describes the claimed an element
selection device that selects a portion of an electronic document, wherein the
selected portion includes information stored within the electronic document,
in the form of clicking on a black triangle (p. 3, ll. 2-3 and Figure 2). The
information selected in Chang is content information.
5. The Chang reference further describes the claimed an editing
device that determines an edit user interface and allows editing of the
selected portion through the edit user interface, wherein the edit user
interface allows editing of information of the selected portion, in the form of
an editable item (p. 4, ll. 1-3). The information edited in Chang is content
information.
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6. The Chang reference further describes the claimed an updating
device that replaces the selected portion with the edited portion, in the form
of supplanting the original (p. 4, ll. 3-5).
7. The Chang reference further describes the electronic document
is an HTML document with template, formatting, and content information
(p. 5, ll. 16-19; p. 11, l. 5; pp. 11-12, section 4.1; and pp. 13-14,
section 4.5).
8. The Chang reference further describes the formatting
information comprises codes which are distinct from editable content items.
Page 14 shows standard “” and “” HTML bold formatting
information stored within the electronic document and distinct content
information “Abe L.” stored within the document.
9. The Chang reference further describes that the formatting
information is editable by an authorized user (p. 11, l. 2).
10. The Chang reference further describes an edit merging device
that merges first modified content information back into the electronic
document even if second content information was altered while the first
information was modified (p. 7, ll. 16-19; p. 14, section 4.6).
11. The prior art Giljum patent teaches that it is desirable to edit the
template or “style” of web pages. (Col. 8, ll. 3-5).
12. The prior art Giljum patent teaches that it is desirable to edit the
formatting or “fonts” of web pages. (Col. 8, ll. 52-54).
13. The prior art Skok published application describes an HTML
content and format editor at paragraph [0065]:
[0065] Once a user is authorized to create or edit content,
the user may invoke tools of the invention to create or
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edit content on the page. In one embodiment of the
invention, the tool is a thin client HTML editor. The
editor may be a thin client editor that is provided as a
JavaTM programming language applet, or it may reside on
each user’s computer. The HTML editor provides the
ability to perform richly formatted text editing, such as
italics, bold, centered, underline, tables, links, inserting
graphics, etc. The invention shows the user content and
editing as it occurs in a WYSIWYG mode, as well as
automatically creating HTML tags that are associated
with the rich formatting. The user can choose between
editing in a WYSIWYG browser emulation display, or an
HTML code level where HTML tags are directly
editable.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See
also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). The Examiner can satisfy this burden by showing some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. KSR Int’l. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d
1385, 1396 (2007) (citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329,
1336 (Fed. Cir. 2006)). Only if this initial burden is met does the burden of
coming forward with evidence or argument shift to the Appellants. Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472,
223 USPQ at 788.
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On appeal, Appellant bears the burden of showing that the Examiner
has not established a legally sufficient basis for combining the teachings of
Giljum with those of Chang.
Appellant may sustain this burden by showing that, where the
Examiner relies on a combination of disclosures, the Examiner failed to
provide sufficient evidence to show that one having ordinary skill in the art
would have done what Appellant did. United States v. Adams, 383 U.S. 39
(1966); In re Kahn, 441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir.
2006); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick,
Co., 464 F.3d 1356, 1360-61, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006).

§ 103 ANALYSIS
With respect to claims 1, 12, and 20, Appellant argues Chang and
Giljum do not disclose or suggest “storing editable template information or
formatting information within the electronic document.” (Br. 3:4-5). We
disagree. Our Findings of Fact 7-9 show that Appellant is clearly in error.
We find that, in Chang, the template, formatting, and content information in
the electronic document are all editable and that Appellant discloses editing
content information using the same content information editor as in Chang
(Specification 4:31-32). Appellant’s claims differ from Chang only with
respect to the type of editor used to edit template or formatting information.
With respect to claims 1, 12, and 20, Appellant also argues Chang and
Giljum do not disclose or suggest the selected (and edited) portion includes
“template information or formatting information” (Br. 3:6-13). Again we
disagree. Chang teaches Appellant’s claimed invention (Findings of Fact
3-6) except for the specific information to be selected and edited being
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template or formatting information. Both Chang and Giljum teach the
desirability of editing template or format information (Findings of Fact 9 and
11-12). Thus, we conclude that the references provide a sufficient
suggestion to those skilled in the art to modify the Chang system to include
group editing of template or formatting information in addition to Chang’s
group editing of content information.
With respect to claims 34, 38, and 42, Appellant argues that Chang
and Giljum do not disclose or suggest “the formatting information is distinct
from editable content items of the electronic document” (Br. 7:15-19). We
disagree. Our Findings of Fact 7-9 show that Appellant is again in error.
We find that, in Chang, the template, formatting, and content information in
the electronic document are all editable and are all distinct.
With respect to claims 35, 39, and 43, Appellant argues that Chang
and Giljum do not disclose or suggest “merging a modified content item
back into an electronic document under the condition where template 15
information or formatting information of the document was altered while a
content item was modified” (Br. 8:1-3). We disagree. Our Finding of Fact
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back into the electronic document even if second content information was
altered while the first information was modified. That is, “[p]ages are not
locked during [group] editing” and edits must be resolved by the user only if
“an edit to the [same] item has occurred.” (Chang 14). Thus, we conclude
that the references provide a sufficient suggestion to those skilled in the art
to modify the Chang system to permit merging of modified first information
back into the electronic document even if second information was altered
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while the first information was modified, so long as the first and second
information are not the same information.
With respect to claims 36, 40, and 44, Appellant argues that Chang
and Giljum do not disclose or suggest merging “a modified item template
back into the electronic document even if
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the content of one or more items 5
managed by the item template was altered while the item template item was
being modified” (Br. 8:14-16). We disagree. This is the same underlying
issue as with claims 35, 39, and 43, and we reach the same conclusion for
the same reasons.
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Because our § 103 analysis based on the Chang and Giljum references
differs from that of the Examiner at key points, we designate our decision as
a new ground of rejection under 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that, “[a] new grounds of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b) as to the rejected claims:
(1) Reopen Prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner …

(2) Request rehearing. Request that the proceeding be reheard under
[37 C.F.R.] § 41.52 by the Board upon the same record …

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CONCLUSION OF LAW
(1) Appellant has failed to establish that the Examiner erred in
rejecting claims 1-3, 5-13, 15-16, 18-21, and 23-45 as being unpatentable
under 35 U.S.C. § 103(a) over Chang and Giljum.
(2) Claims 1-3, 5-13, 15-16, 18-21, and 23-45 are not patentable.
DECISION
The Examiner's rejection of claims 1-3, 5-13, 15-16, 18-21, and 23-45
is affirmed.
No time for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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37 C.F.R. § 41.50(b)

tdl/gw

GUNNAR G. LEINBERG
NIXON PEABODY LLP
CLINTON SQUARE
P.O. BOX 31051
ROCHESTER, NY 14603

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