Ex Parte Bier

Board of Patent Appeals and Interferences

Sep 25, 2009

10751955 (B.P.A.I. Sep. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC A. BIER
____________

Appeal 2008-005956
Application 10/751,955
Technology Center 2100
____________

Decided: September 28, 2009
____________

Before JAMES D. THOMAS, JOSEPH L. DIXON, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

THOMAS, 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 1-17, and 27-30. Appellant has cancelled claim 26 and
the Examiner has objected to claims 18-25. We have jurisdiction under
35 U.S.C. § 6(b).
Appeal 2008-005956
Application 10/751,955

2
We Affirm.
INVENTION
A system and method for automatic conversion of web pages to
shared structured web pages. An input web page is augmented with
syntactic elements of a server-based software tool to create and customize
group-writeable web pages. Sub-regions of the web page that are to be
individually-editable items are identified, and syntactic elements are added
to show where these editable regions begin and end, and where clickable
buttons will appear that trigger the editing of an individual item, the addition
of a new item, or other editing features. Also, syntactic elements are added
that act as templates for the layout of any item to be added or modified. The
conversion process includes parsing the Web page into an intermediate
structure, adding information to individual tokens about the structures in
which the tokens play a part, and then generating the new page while
making one or more final passes through the intermediate structure from
beginning to end. (Spec. 43, Abst., Figs. 6, 7, 10, and 34.)

REPRESENTATIVE CLAIM
Below is reproduced independent claim 1:
1. A method for automatically converting documents expressed in a
markup language to structured shared writeable and editable documents,
comprising:

inputting a first document having a first document coding expressed in
the' markup language;
Appeal 2008-005956
Application 10/751,955

3
automatically converting the first document into a second document
having a second document coding expressed in the markup language by
automatically identifying at least one region of content of the first document
as an editable item and identifying at least one sub-region of the at least one
region as an editable field;

automatically constructing a template describing how each of the at
least one editable item in the second document will be formatted and
displayed, and which user interface interactors will be provided to edit fields
of that editable item; and

outputting the second document, containing the template and content
mostly identical in appearance to the first document with the exception of
one or more selected content icons, to form a self-contained shared, editable
document.

PRIOR ART AND EXAMINER’S REJECTIONS
The Examiner relies on the following references as evidence of
anticipation and unpatentability:
Emmelmann US 2003/0074634 A1 Apr. 17, 2003
Lin US 6,941,521 B2 Sep. 06, 2005
(filed Mar. 29, 2002)

Chang, Bay-Wei, In-Place Editing of Web Pages: Sparrow Community-
Shared Documents, 10/19/02, Available on the www at:
http:llwww2.parc.comlistllprojectslsparrowldoc/ww7/, pages 1-16.

As expressed at page 3 of the Answer, claims 1-17 and 30 stand
rejected under the second paragraph of 35 U.S.C. § 112 as being indefinite.
The Examiner utilizes Chang to reject independent claims 1, 27, and 30
Appeal 2008-005956
Application 10/751,955

4
under 35 U.S.C. § 102(a). Lastly, the Examiner relies upon the combination
of Emmelmann in view of Lin to reject all claims on appeal, claims 1-17 and
27-30 under 35 U.S.C. § 103.

Claim Grouping
For each of the separately stated rejections encompassing various
claims on appeal, Appellant and we consider independent claim 1 as
representative of all of them.

ISSUES
1. Has Appellant shown that the Examiner erred in rejecting
claims 1-17 and 30 as being indefinite under the second paragraph of
35 U.S.C. § 112?
2. Has Appellant shown that the Examiner erred in finding that
Chang anticipates under 35 U.S.C. § 102(a) the subject matter of
independent claims 1, 27, and 30 on appeal?
3. Has Appellant shown that the Examiner erred in concluding
that the combination of Emmelmann and Jin would have rendered obvious
the subject matter of representative independent claim 1 on appeal within
35 U.S.C. § 103?

Appeal 2008-005956
Application 10/751,955

5
FINDINGS OF FACT (FF)
1. Appellant’s arguments in the principal Brief and the Reply Brief
characterize the discussion in Specification paragraph [0006] as relating to
the prior art, particularly the Chang reference relied upon by the Examiner.
This paragraph is reproduced here:
Sparrow Web is a server-based software tool that allows group-
writeable web pages to be created and customized. Before this
invention, converting standard web pages in HTML format to group-
writeable Sparrow Web type pages was largely a manual process. The
page author would need to read the reference manual describing the
syntactic elements that need to be added to a standard web page to
convert the standard web page to a Sparrow Web type page, and then
add those syntactic elements using a text editor or HTML editor.
Alternatively, if a Sparrow Web type page with the appropriate layout
and structure was available, the page author could use Sparrow Web's
copy page feature to make a new Sparrow Web type page with that
layout and structure. The page author could then copy the content, one
item at a time, into that new Sparrow Web type page from the source
web page that was being converted.

Paragraph [0056] indicates that with respect to the disclosed
invention, “a labor-intensive process of converting web pages into Sparrow
Web pages is at least partly automated so that this conversion can be done,
for example, simply by filling in a web form displayed by the browser.”
With respect to the showing in Figure 4, paragraph [0065] indicates that the
web page in this Figure “is similar in appearance to standard web page 200
[in Figure 2] with the exception of the selectable icons substituted in place of
the bullets located before the list items.”
Appeal 2008-005956
Application 10/751,955

6
2. Emmelmann’s abstract teaches:
Server side internet applications are created by placing interactive
server side components (ISSC's) on internet pages. ISSC's encapsulate
dynamic page functions including processing of user responses on the
server and thus can be reused, which drastically reduces programming
effort. The ISSC technique remembers information (in form of an
ISSC object) about each ISSC during dynamic page generation on the
server. Then, it generates HTML code in a way such that the ISSC
event is sent to the server using a conventional HTTP GET or POST
request. On the server, the event is then passed to the corresponding
ISSC object. All components work without disturbing each other,
even when nested or combined. A browser based editor can also be
used to place ISSC's on pages and to modify their properties. During
dynamic page generation, scripts and handles are embedded into the
page that permit editing of the page itself.

In contrast to a client computer-server computer relationship,
including browser software and server software in Figure 6, Emmelmann’s
Figure 7 shows broad concepts associated with his interactive server side
components (ISSC) processor module in Figure 7. This is expanded upon
slightly in Emmelmann’s flowchart Figure 8 to include reading and parsing a
given page as well as eventually generating a page that is passed from the
server to the browser program. This parsing functionality is discussed
beginning at page 6. The figures in Emmelmann following Figure 8 detail
more software functionalities to include the ability of editing by adding and
modifying in Figure 18. This figure adds user interface elements and scripts
for the user to subsequently use for editing functions. Once returned to the
user as indicated in the last sentence of the abstract reproduced above, the
Appeal 2008-005956
Application 10/751,955

7
user may edit the page itself. This feature is discussed at page 10 as relied
upon by the Examiner.

PRINCIPLES OF LAW
35 U.S.C. § 112, 2nd PARAGRAPH
Under the second paragraph of 35 U.S.C. § 112, it is to be noted that
to comply with the requirements of this paragraph, a claim must set out and
circumscribe a particular area with a reasonable degree of precision and
particularity when read in light of the disclosure and the teachings of the
prior art as it would be by the artisan. Note In re Johnson, 558 F.2d 1008,
1016 (CCPA 1977); In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).

ANTICIPATION
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Appeal 2008-005956
Application 10/751,955

8
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

ANALYSIS
Rejection under the second paragraph of 35 U.S.C. § 112
We do not agree with the Examiner’s views that the relative term
“mostly identical” appearing near the end of independent claims 1 and 30 on
appeal renders these claims fatally indefinite under the second paragraph of
35 U.S.C. § 112.
In contrast, Appellant’s basic position as to this rejection at pages 15
and 16 of the principal Brief and at pages 1 and 2 of the Reply Brief is that,
based upon the noted portions in the Specification and at least Figures 2 and
4, the artisan would reasonably understand the metes and bounds of this
quoted subject matter considered indefinite by the Examiner. As noted in
the finding of fact 1 with respect to our reference to the discussion of the
invention in paragraph [0065] of the Specification as filed, it is stated that
the modified web page is similar in appearance, which is substantially co-
extensive with the modified recitation of claims 1 and 30 of “mostly
identical.” The use of these words is consistent with the comparative
showings in Figures 2 and 4.
As noted by our earlier citation of pertinent case law as to this
rejection, claims 1 and 30 set out and circumscribed a particular area with a
reasonable degree of precision and particularity when read in light of the
Appeal 2008-005956
Application 10/751,955

9
disclosure and teachings of the prior art as it would be by an artisan. As
such, Appellant has shown that the Examiner erred in rejecting independent
claims 1 and 30 under the second paragraph of 35 U.S.C. § 112.

Anticipation Rejection
We reverse this rejection essentially for the reason set forth by
Appellant in the Brief and Reply Brief.
In finding of fact 1, we reproduced what Appellant has stated in the
Brief and Reply Brief is a statement of the prior art in paragraph [0006] of
the Specification. There is not dispute that the so-called “Sparrow Web”
referenced here is representative of the teachings in Chang.
What is significant about paragraph [0006] is that the page author
manually converts a standard web page to another type of web page as well
as manually adds syntactic elements using a text editor or an HTML editor.
These user required, manual functionalities of the Chang reference excludes
its applicability under 35 U.S.C. § 102 to the rejected claims because these
claims specifically recite that the conversion process is automatic. The
recited automatic conversion automatically identifies regions of a document
and sub-regions of the document, and further automatically constructs a
template with interface interactors for the user/author to utilize.
These automatically-based functionalities are manually performed in
the Chang reference, thus leading us to reverse the Examiner’s rejection of
Appeal 2008-005956
Application 10/751,955

10
claims 1, 27, and 30 as being anticipated by Chang. Therefore, Appellant
has shown that the Examiner erred in this rejection.

Obviousness Rejection
This rejection encompasses all claims on appeal, claims 1-17, and 27-
30, that include independent claims 1, 27, 28, and 30. Each of these
independent claims recites the automatic conversion of a first document to a
second document by automatically identifying regions and sub-regions of it
and then automatically constructing a template and user interface interactors.
The inputting and outputting statements of function in representative
independent claim 1 on appeal are not recited to be automatic, thus being
inclusive of manual operations by a user. While reciting in effect manually
inputting operations, independent claim 27 does not recite any outputting
functionality. The inputting and outputting functionalities of independent
claim 28 are consistent with the manual functionalities we have interpreted
with respect to independent claim 1. In contrast to the other claims,
independent claim 30 requires an automatic outputting functionality that
includes a template and a substantially identical in content “editable
document” as compared with the first or initial document.
We note that Appellant has not challenged the combinability of
Emmelmann and Lin within 35 U.S.C. § 103 in the principal Brief on
appeal. Therefore, no governing case law is cited in this opinion to that
effect. The remaining determination to be made is whether the combined
Appeal 2008-005956
Application 10/751,955

11
teachings and/or suggestions between the combination of Emmelmann and
Lin would have rendered obvious to one of ordinary skilled in the art the
subject matter that is claimed and argued before us.
In this light, Appellant does not contest what the Examiner relies upon
in Lin in the principal Brief on appeal. Moreover, based upon Appellant’s
arguments as to this rejection at page 22 of the principal Brief and at page 4
of the Reply Brief, Appellant’s principal argument here urges that
Emmelmann does not teach the features of automatically identifying regions
and sub regions of a first document as a part of an automatic conversion
process. The view is taken that Emmelmann performs this function
manually.
We strongly disagree with this view since the showings in
Emmelmann’s invention in Figures 7 and 8 indicate that a comparable type
of parsing and generation of a new document takes place in an automatic,
software-based, corresponding manner to the extent argued and otherwise
claimed. Because Emmelmann’s invention is focused upon internet pages,
they correspond to the claimed markup language web pages claimed.
As broadly recited with respect to the inputting functionality of each
independent claim on appeal, the actual language of the claims permits a
user to actually compose a web page as well as to utilize Emmelmann’s
ISSC processor upon existing web pages in a server. Even the automatic
outputting functionality recited only in independent claim 30 on appeal is
consistent with the sending in Emmelmann’s modified server-based web
Appeal 2008-005956
Application 10/751,955

12
page to a browser, to permit a user to edit the page itself because it then
contains embedded scripts and handles and the like. As set forth at the end
of the abstract in an abbreviated form, this is a dynamic page generation
capability comparable to an automatic generation capability at the end of
independent claim 30 on appeal.
The parsing, adding, and automatic generation of pages in
Emmelmann compares with the correspondingly disclosed and more broadly
claimed features of representative independent claim 1 on appeal.
Emmelmann’s teachings of encapsulating dynamic page functions or
otherwise embedding them into a page correspond to the automatic addition
of templates or user interactors, such as the disclosed syntactic elements, as
broadly claimed. Therefore, the rejection of all claims on appeal is under
35 U.S.C. § 103 is affirmed.

Conclusion of Law
1. Appellant has shown that the Examiner erred in rejecting
representative independent claim 1 under the second paragraph of 35 U.S.C.
§ 112.
2. Appellant has also shown that the Examiner erred by finding
that Chang teaches the automatic features of representative independent
claim 1 on appeal.
3. Lastly, Appellant has not shown that the Examiner erred in
concluding that the combination of Emmelmann and Lin would have
Appeal 2008-005956
Application 10/751,955

13
rendered obvious to a person of ordinary skill in the art the subject matter of
representative independent claim 1 on appeal.

Decision
The Examiner’s rejection of claims 1-17 and 30 under the second
paragraph of 35 U.S.C. § 112 is reversed. We also reverse the anticipation
rejection of representative independent claim 1 on appeal as being
anticipated by Chang within 35 U.S.C. § 102(a). In contrast, however, we
affirm the Examiner’s rejection of representative independent claim 1 on
appeal as being obvious within 35 U.S.C. § 103 over the teachings of
Emmelmann and Lin. Since we have affirmed at least one rejection that
encompasses all claims on appeal, the decision of the Examiner 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).

AFFIRMED

rwk

OLIFF & BERRIDGE, PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850