Ex Parte Bodin et al

Board of Patent Appeals and Interferences

Jan 31, 2011

10887430 (B.P.A.I. Jan. 31, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM KRESS BODIN, MICHAEL JOHN BURKHART,
DANIEL G EISENHAUER, DANIEL MARK SCHUMACHER, and
THOMAS JAMES WATSON
____________________

Appeal 2009-006305
Application 10/887,4301
Technology Center 2100
____________________

Before JOSEPH L. DIXON, DEBRA K. STEPHENS, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed July 8, 2004. The real party in interest is International
Business Machines Corp. (Br. 1.)
2 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
Appellants appeal from the Examiner’s rejection of claims 1-21 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
The invention at issue on appeal relates to a method and system for
providing improved differential content delivery for multimedia
presentations by creating a presentation document that includes a content-
specific presentation grammar and a structured document, e.g., a session
document including a session grammar and a session structured document.
(Spec. 2:4-12, 2:31-3:8.)3
Representative Claim
Independent claim 1 further illustrates the invention, and is
reproduced below with the key disputed limitations emphasized:
1. A method for differential dynamic content delivery,
the method comprising:
providing a session document for a presentation, wherein
the session document includes a session grammar and a session
structured document;
selecting from the session structured document a
classified structural element bearing a preview designation;
presenting the selected structural element to a
prospective user participant; and

3 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“Br.”)
filed May 1, 2007. We also refer to the Examiner’s Answer (“Ans.”) mailed
August 21, 2007.
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receiving from the prospective user participant an
indication of interest in the selected structural element.

References
The Examiner relies on the following references as evidence in
support of the rejections:
Juliana Freire, Bharat Kumar, Daniel Lieuwen, WebViews: Accessing
Personalized Web Content and Services, at 576-586, Proc. of the 10th Int’l
Conf. on World Wide Web, ACM Press (May 2001) (“Freire”);

Robert Capra, Manuel A. Perez-Quiones, Naren Ramakrishnan,
WebContext: Remote Access to Shared Context, at 1-9, ACM Int’l Conf.
Proc. Series, Vol. 15, Proc. of the 2001 Workshop on Perceptive User
Interfaces (November 2001) (“Capra”).

Rejections on Appeal
The Examiner rejects claims 1-3, 8-10, and 15-17 under 35
U.S.C. § 103(a) as being unpatentable over Freire.
The Examiner rejects claims 4-7, 11-14, and 18-21 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Freire and
Capra.

ISSUES
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us are as follows:
1. Does the Examiner err in finding Freire would have taught or
suggested: (a) “providing a session document for a presentation, wherein the
session document includes a session grammar and a session structured
document;” (b) “selecting from the session structured document a classified
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structural element bearing a preview designation;” (c) “presenting the
selected structural element to a prospective user participant;” and (d)
“receiving from the prospective user participant an indication of interest in
the selected structural element” as recited in Appellants’ claim 1?
2. Does the Examiner err in finding Freire and Capra could have
been properly combined?

FINDINGS OF FACT (FF)
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows. We also add the following factual
findings:
Appellants’ Specification
1. Appellants’ Specification defines a “session document” as
follows:
A session document is a repository for filtered content,
presentation content that is filtered according to attributes of an
audience for a presentation . . . . The purpose of a session
document is to provide a repository for reducing the volume of
data for a presentation with respect to unfiltered presentation
documents. A session document is a document derived from a
presentation document targeted for the participants of a
presentation. More particularly, a session document is a data
structure that includes a session grammar derived from a
presentation grammar in a presentation document and a session
structured document derived from a structured document in a
presentation document.
(Spec. 31:11-21.)
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2. Appellants’ Specification does not explicitly define a “session
grammar,” but describes a “session grammar” as being “derived from a
presentation grammar” (Spec. 31:19-20), and specifically, “filtering . . . the
presentation grammar . . . in dependence upon the extracted structural
elements . . . into session grammar” (Spec. 32:19-20). Appellants’
Specification defines a “presentation grammar” as “a data structure that
includes a set of key phrases used to identify presentation action identifiers
and optional parameters for use in formulating presentation control
instructions relevant to structural elements of a content type.” (Spec. 9:18-
21.) Appellants’ Specification explains that:
The structured document typically has structural elements such
as pages, paragraphs, cells, titles, and the like marked with
structural identifiers. A content-specific presentation grammar
ties presentation actions to the document structure through
these structural element identifiers. A presentation actions
directs the presentation of a document such as by moving the
presentation to the next page of the document, the previous
paragraph of the document and so on. A presentation grammar
empowers a presenter to invoke the presentation actions using
speech.
(Spec. 2:6-13.) And, further explains:
Typical embodiments also include creating a presentation
document that is carried out by creating, in dependence upon an
original document, a structured document including one or
more structural elements; classifying a structural element of the
structured document according to a presentation attribute; and
creating a presentation grammar for the structured document,
wherein the presentation grammar for the structured document
includes grammar elements each of which includes an identifier
for at least one structural element of the structured document.
(Spec. 4:1-7.)
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3. Appellants’ Specification does not explicitly define a “session
structured document,” but describes a “session structured document” as
being “derived from a structured document in a presentation document”
(Spec. 31:20-21), and specifically, “filtering . . . the structured document . . .
by extracting . . . structural elements . . . and writing . . . the extracted
structural elements . . . into a session structured document” (Spec. 32:14-
18). Appellants’ Specification explains that a “structured document
typically has structural elements such as pages, paragraphs, cells, titles, and
the like marked with structural identifiers” (Spec. 2:7-8), and creating a
structured document by converting “an original document into a structured
document by inserting structural element identifiers” (Spec. 12:9-10).
4. Appellants’ Specification does not explicitly define a
“structural element,” but explains that “structural elements” are “pages,
paragraphs, cells, titles, and the like marked with structural identifiers.”
(Spec. 2:7-8). Appellants further explain that “structural elements” may be
mark-up language document elements (HTML/XML elements) delimited by
“structural element identifiers” (tags) which may “include ,
, , , , , , , <heading>
. . .” (Spec. 12:11-12) – “[t]hese examples of structural elements identifiers
are expressed as markup tags such as would be used, for example, in a
markup language such as HTML (“HyperText Markup Language”) or XML
(“eXtensible Markup Language”)” (Spec. 12:13-15).
5. Appellants’ Specification does not explicitly define a “preview
designation,” but explains that:
The method . . . operates generally by providing a session
document, selecting from the session structured document a
classified structural element bearing a preview designation, and
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presenting the selected structural element to a prospective user.
In typical embodiments, a subset of the classified structural
elements of a session document is designated for preview, so
that filtering a presentation on a preview designation effectively
provides a presentation of a preview-designated subset of the
classified structural elements of a session document.
(Spec. 56:10-17; see Spec. 56-59).
Freire Reference
6. Freire describes, in relevant part, creating individualized
(customized) (Internet) Web page views (“WebViews”), recording web
browser actions (“smart bookmarks”), and voice-enabled WebViews
(“VoiceViews”). (Freire at 577 (column 1, middle) through 578 (column 1,
bottom); 578 (column 2, bottom); 579 (column 1, bottom to column 2, top);
582-585 (discussing transcoding and voice response system).) Specifically,
Freire describes retrieving a Web page of interest that contains desired
information, and specifying particular elements of interest on the page to
filter out irrelevant information. (Freire at 577 (column 2, bottom) through
578 (column 1, middle); 578 (column 2, bottom); see Ex. 1.1 (577), Ex. 2.1
(578).) For example, Freire explains that a “Web view thus must
encapsulate the actions required to retrieve a particular page, along with the
specification of which elements should be extracted from the retrieved
page.” (Freire at 578 (column 1, top).) “The WebViews architecture
addresses these problems by providing a VCR-style interface similar to the
Web-VCR . . . to transparently record browsing steps; and a point-and-click
interface to let users select page fragments.” (Freire at 578 (column 1, top-
middle).) Freire also specifically describes an interactive voice response
system for utilizing WebViews (Freire at 582-85), and in particular,
navigating through a table – the script listens for key word commands such a
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“next” and “skip” (Freire at 582 (column 2, bottom) through 583 (column 1,
middle)).
Capra Reference
7. Capra, in relevant part, describes a computer architecture for
browsing Web pages using a personal computer and then making queries
about the information in the pages utilizing a speech (voice) recognition
interface. (Capra at 1.)

ANALYSIS
Appellants argue the limitations of independent claim 1 with respect
to the Examiner’s § 103 rejection of claims 1-3, 8-10, and 15-17. (Br. 16-
17.) Appellants do not separately argue the limitations of claims 4-7, 11-14,
and 18-21 with particularity. (Br. 18-19.) Rather, Appellants contend that
the § 103 rejection of claims 4-7, 11-14, and 18-21 is improper for the
reasons provided with respect to claim 1, and that the Examiner improperly
combined Freire and Capra because there no suggestion or motivation to
combine the references. (Br. 18-19.) Therefore, we select independent
claim 1 as representative of Appellants’ arguments and groupings with
respect to the Examiner’s obviousness rejections, and also generally address
the combination of Freire and Capra with respect to claims 4-7, 11-14, and
18-21. 37 C.F.R. § 41.37(c)(1)(vii). See In re Nielson, 816 F.2d 1567, 1572
(Fed. Cir. 1987). We have considered only those arguments that Appellants
have actually raised in their Brief. Arguments that Appellants could have
made but chose not to make in their Brief have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner sets forth a
detailed explanation of a reasoned conclusion of obviousness in the
Examiner’s Answer with respect to each of Appellants’ claims (Ans. 3-9),
and in particular independent claim 1 (Ans. 3-4, 7-9). Therefore, we look to
the Appellants’ Brief to show error in the proffered reasoned conclusions.
See Kahn, 441 F.3d at 985-86.
Arguments Concerning the Examiner’s Rejection of
Representative Claim 1
The Examiner rejects Appellants’ independent claim 1 as being
unpatentable over the Freire. (Ans. 3-4.) Based on the record before us, we
do not find error in the Examiner’s obviousness rejection of Appellants’
representative claim 1 which calls for, in pertinent part: (1) “providing a
session document for a presentation, wherein the session document includes
a session grammar and a session structured document;” (2) “selecting from
the session structured document a classified structural element bearing a
preview designation;” (3) “presenting the selected structural element to a
prospective user participant;” and (4) “receiving from the prospective user
participant an indication of interest in the selected structural element.” We
agree with the Examiner that the Freire would have taught or suggested the
disputed features of Appellants’ claim 1 for essentially the reasons espoused
by the Examiner (Ans. 7-9).
The Examiner finds that Freire discloses, teaches, and/or suggests
each feature of Appellants’ claim 1, including: “providing a session
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document for presentation” (“Freire teaches a method of creating
personalized content for web pages or services for differential dynamic
content delivery” (citing Freire at 577, col. 2, para. 2)); “a session grammar”
(“Freire also teaches encoding the smart bookmark as an XML document
with XML grammar expressions” (citing Freire at 583-85)); “a session
structured document” and “selecting . . . a classified structural element
bearing a preview designation” (“Freire teaches providing a session
document for a presentation, in which a smart bookmark records and saves
user browsing actions from the session in a structured document called a
smart bookmark or web view” (citing Freire at 578-79)); and “receiving . . .
an indication of interest in the selected structural element” (“a user may
want to specify individual elements of the page they are interested in” (citing
Freire at 578)). (Ans. 3-4; see Ans. 7-9.) Freire’s disclosures support the
Examiner’s findings. (FF 6.) The Examiner further explains a rationale for
combining Freire and Capra. (Ans. 5-6.)
Appellants contend that Freire does not teach or suggest “a session
document for a presentation” including “a session grammar” and “a session
structured document” because “Freire has nothing to do with presentations
that are targeted to user participants,” (Br. 6) and does not mention a
“session document,” a “session grammar,” or a “session structured
document” (Br. 7). Appellants also contend that Freire does not teach or
suggest “selecting from the session structured document a classified
structural element bearing a preview designation” (Br. 10; see Br. 7-10);
“presenting the selected structural element” (Br. 13; see Br. 11-14); and
“receiving . . . an indication of interest in the selected structural element”
(Br. 16; see Br. 14-16). Appellants further contend that the Examiner has
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not provided a proper motivation for combining Freire and Capra because
“the Office Action does not explicitly point to any teaching within Freire,
Capra, or the body of knowledge of those of skill in the art suggesting the
proposed combination.” (Br. 19; see Br. 18-19.)
We begin our analysis by construing Appellants’ disputed claim
limitations. We give claim terminology the “broadest reasonable
interpretation consistent with the [S]pecification” in accordance with our
mandate that “claim language should be read in light of the [S]pecification
as it would be interpreted by one of ordinary skill in the art.” In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations
omitted). Based on Appellants’ recited claim language and Appellants’
disclosures (FF 1-5) we construe Appellants’ claim to mean providing a data
structure to a user (a session document for presentation to a user), which
includes additional data structures (a session grammar and a session
structured document), selecting an element (e.g., a markup language
element) including an identifier or indicator that the element is viewable (a
classified structural element bearing a preview designation), and presenting
the selected element to a user and receiving an indication of interest from the
user.
Appellants explicitly define a “session document” in general terms
relative to several other features (FF 1), but do not explicitly define “session
grammar,” “session structured document,” “classified structural element,” or
“preview designation;” nor have Appellants demonstrated these terms have
special meaning in the art. (FF 1-5.) Indeed, Appellants describe these
terms as simply data structures, using abstract generalities. (FF 1-5.) At
most given Appellants’ disclosures, we construe a session document as a
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document including a filtered subset of the information in some original
presentation document, and containing additional data structures – a session
grammar derived from a presentation grammar and a session structured
document derived from a structured document in the presentation document.
(FF 1; see FF 2-4.)
Appellants explain that grammar (e.g., session grammar which is a
subset of (derived from) presentation grammar) describes presentation
actions (e.g., moving to the next document page) which in turn allow a
presenter to make the actions using speech. (FF 2.) Appellants explain that
a structured document (e.g., a session structured document which is a subset
of the information in (derived from) a structured document in a presentation
document) describes a document with structural elements such as pages,
paragraphs, and/or titles, marked with structural identifiers (e.g., a mark-up
language document (HTML/XML) with element delimited by tags). (FF 3-
4.) Appellants explain that the “preview designation” indicates a particular
element “as useful for preview” (Spec. 57:4-5), and filtering the document
based “on a preview designation . . . [to] provide[ ] a presentation of a
preview-designated subset of the classified structural elements of a session
document” (FF 5) – i.e., a subset of the elements (from the session
document, which in turn is a subset of the presentation document (structured
document) elements) viewable by the user.
Further, we find, in view of Appellants’ disclosures (FF 1-5), that
Appellants’ recited “session document,” “session grammar,” “session
structured document,” “classified structural element,” and “preview
designation” all constitute non-functional descriptive material. These
recitations merely recite what the information or data structures represent.
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How a data structure may be named or labelled (e.g., “document,”
“grammar,” or “element”) does not functionally change the data structure,
and “does not lend patentability to an otherwise unpatentable computer-
implemented product or process.” Ex parte Nehls, 88 USPQ2d 1883, 1889
(BPAI 2008) (precedential). See Ex parte Curry, 84 USPQ2d 1272, 1274
(BPAI 2005) (informative), aff’d, No. 06-1003 (Fed. Cir. June 12, 2006)
(Rule 36). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Nehls,
88 USPQ2d at 1887-90 (discussing non-functional descriptive material).
As detailed in the Findings of Fact section supra, Freire describes
providing a data structure to a user (a web page), which includes additional
data structures, selecting an element including an identifier, and presenting
the selected element(s) to a user and receiving an indication of interest from
the user – the user produces a personalized/filtered version of a web page
utilizing WebViews (and VoiceViews), and retrieves the personalized page
(i.e., WebViews presents selected elements, in which the user has indicated
interest, to the user).
Moreover, assuming arguendo we were to attribute some patentable
weight to Appellants various recited labels, and considering the breadth of
Appellants’ claim limitations and Specification disclosures, we agree with
the Examiner that Freire would have taught or suggested, to one skilled in
the art, the disputed limitations of Appellants’ representative claim 1.
Specifically, Freire teaches or at least suggests a session document data
structure and a session structured document, in that Freire describes
presenting a particular web page containing individualized content to a user
(through a browser). (FF 6, see e.g., Freire at 578, Ex. 2.1.) Freire also
teaches or at least suggests a session grammar data structure, in that Freire
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describes VoiceViews – i.e., voice-enabled access to WebViews. (FF 6, see
e.g., Freire at 583 – VoiceView allows a user to navigate through a table
using “next” or “skip.”) Freire further teaches or at least suggests selecting a
structural element. (FF 6.)
Additionally, Freire describes presenting a web page in “a VCR-style
interface . . . to transparently record browsing steps; and a point-and-click
interface to let users select page fragments.” (FF 6.) We find making
selected portions of a web page (structured document including structural
elements) viewable to a user for selecting elements to extract, would have
taught or at least suggested an identifier making the elements viewable (i.e.,
a preview designation). Freire also teaches or at least suggests presenting
selected elements to a user and receiving an indication of interest from the
user, in that the user produces a personalized web page utilizing WebViews
and retrieves the personalized page. (FF 6.) In other words WebViews
presents selected elements that the user has indicated are of interest.
Thus, based on a broad but reasonable interpretation of Appellants’
disputed claim limitations in light of Appellants’ Specification, we find that
Freire would have taught or suggested the disputed limitations of: (1)
“providing a session document for a presentation, wherein the session
document includes a session grammar and a session structured document;”
(2) “selecting from the session structured document a classified structural
element bearing a preview designation;” (3) “presenting the selected
structural element to a prospective user participant;” and (4) “receiving from
the prospective user participant an indication of interest in the selected
structural element” as recited in Appellants’ claim 1 to one skilled in the art.
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We find Appellants’ contrary arguments unpersuasive, for the reasons
set forth above, and because Appellants’ arguments are not commensurate
with the scope of their claim limitations – e.g., “Freire has nothing to do
with presentations that are targeted to user participants” (Br. 6) – the argued
features are not recited in the claim limitations. Further, Appellants failed to
file a Reply Brief to rebut the findings and responsive arguments made by
the Examiner in the Answer. Therefore, we find that Appellants do not
provide any persuasive evidence or argument that Freire fails to disclose,
teach, and/or suggest the disputed features.
Appellants do not separately argue claims 2, 3, 8-10, and 15-17
(supra), and these claims fall with representative claim 1. It follows that
Appellants do not persuade us of error in the Examiner’s obviousness
rejection of claims 1-3, 8-10, and 15-17, and we affirm the Examiner’s
rejection of these claims.
Arguments Concerning the Examiner’s Rejection of
Claims 4-7, 11-14, and 18-21
Appellants contend that the Examiner’s obviousness rejection of
claims 4-7, 11-14, and 18-21 is improper for the reasons provided with
respect to claim 1, and that the Examiner improperly combined Freire and
Capra because there no suggestion or motivation to combine the references.
(Br. 18-19.) As detailed in the Findings of Fact section supra, both Freire
and Capra describe utilizing voice recognition systems to access and
manipulate web pages. (FF 6, 7.) Therefore, we find Freire and Capra to be
in the same field of endeavor, and are analogous art. Thus, we conclude, as
did the Examiner, that it would have been obvious to an ordinarily skilled
artisan at the time of Appellants’ invention to combine Freire and Capra.
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(Ans. 5-6.) Combining Capra’s teaching of receiving key words for
invoking a presentation action (Ans. 5) with Freire’s voice recognition
system (FF 6) is tantamount to the predictable use of prior art elements and
techniques according to their established functions – an obvious
improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
We also find that the Examiner articulates a rationale – improved efficiency
and performance (“increasing the portability and accessibility of the shared
content” (Ans. 6)) – for combining Freire and Capra based on “some rational
underpinning to support the legal conclusion of obviousness.” KSR, 550
U.S. at 418 (quoting Kahn, 441 F.3d at 988).
Thus, we find Freire and Capra would have been properly
combinable. Appellants do not separately argue dependent claims 4-7, 11-
14, and 18-21 (supra). It follows that Appellants do not persuade us of error
in the Examiner’s obviousness rejection of claims 4-7, 11-14, and 18-21, and
we affirm the Examiner’s rejection of these claims.

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-21 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-21 under 35 U.S.C.
§ 103(a).

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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)(v).

AFFIRMED

msc

International Corp (BLF)
c/o Biggers & Ohanian, LLP
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