Ex Parte Bright

Patent Trials and Appeals Board

Feb 21, 2013

11286446 - (D) (P.T.A.B. Feb. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/286,446 11/23/2005 Walter G. Bright 112076-152424 8181
25943 7590 02/21/2013
Schwabe Williamson & Wyatt
PACWEST CENTER, SUITE 1900
1211 SW FIFTH AVENUE
PORTLAND, OR 97204
EXAMINER
HAILU, TADESSE
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
02/21/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WALTER G. BRIGHT
____________________

Appeal 2013-003725
Application 11/286,446
Technology Center 2100

____________________

Before DEBRA K. STEPHENS, JUSTIN BUSCH, and MIRIAM L.
QUINN, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/286,446

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Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1, 4-8, 11-16, 19-23, 26-30, 33-38, and 41-45. We have
jurisdiction under 35 U.S.C. § 6(b). Claims 2, 3, 9, 10, 17, 18, 24, 25, 31,
32, 39, and 40 have been cancelled.
We AFFIRM.
Introduction
According to Appellant, the invention relates to parsing a main
document and referenced frame documents to be rendered by a browser for a
display page, to identify where text and graphics objected are to be located
(Abstract).

STATEMENT OF THE CASE

Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. A method for controlling an order in which objects are
rendered on a display page by a browser, comprising

requesting, by a computing device, a main document
corresponding to the display page from a network server, said
main document comprising code defining a layout of internal
objects and external objects to be rendered in the display page,
wherein the internal objects are included in the main document
and the external objects are referenced by the main document[,
said external objects including] and include any frame
documents referenced in the main document;

parsing, by the computing device, said code of the main
document and any frame documents referenced by the main
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document to identify locations where said internal and external
objects are to be rendered [on ]in the display page;

identifying, by the computing device, a location of a
cursor relative to the display page; identifying and selecting, by
the computing device, [an ]a to-be-rendered internal or external
object nearest the location of the cursor;

rendering in the display page, and not in an external
popup page, by the computing device, the internal/external
object that is identified to be nearest the location of the cursor
before rendering remaining internal and external objects; and

rendering thereafter, by the computing device, [other ]the
remaining internal and external objects to complete rendering of
the display page.

References
Allen US 5,918,239 Jun. 29, 1999
Bates US 6,585,776 B1 Jul. 1, 2003

Rejections
(1) Claims 1, 8, 16, 23, 30, 38, and 45 stand rejected under
35 U.S.C. § 112, first paragraph, for failure to comply with the written
description requirement.
(2) Claims 1, 8, 16, 23, 30, 38, and 45 stand rejected under
35 U.S.C. § 251 as being based upon new matter added to the patent for
which reissue is sought.
(3) Claims 1, 4-8, 11-16, 19-23, 26-30, 33-38, and 41-45 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Allen and
Bates.
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We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii)(2011).

PRINCIPLES OF LAW
“Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation.” Santarus,
Inc. v. Par Pharmaceutical Inc., 694 F.3d 1344 (Fed Cir. 2012). An express
intent to confer on the claim language the novel meaning imparted by the
negative limitation is required, such as an express disclaimer or independent
lexicography in the written description that provides support for the negative
limitation. Omega Engineering, Inc, v. Raytek Corp., 334 F.3d 1314, 1323
(Fed. Cir. 2003) (citations omitted).

ISSUE 1
35 U.S.C. § 112, first paragraph: Claims 1, 8, 16, 23, 30, 38, and 45 -
Written Description Requirement

Appellant argues the Specification contains support that demonstrates
that the inventor was in possession of the claimed invention (App. Br. 12-
13). Specifically, Appellant points to column 10, line 66 to column 11, line
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30 of the Specification as describing “rendering in the display page, and not
in an external popup page” (emphasis ours) as recited in claim 1 (id.).

Issue 1: Has the Examiner erred in finding the invention fails to
comply with the written description requirement?

ANALYSIS
“To satisfy the written description requirement, ‘the
applicant does not have to utilize any particular form of
disclosure to describe the subject matter claimed, but the
description must clearly allow persons of ordinary skill in the
art to recognize that he or she invented what is
claimed.’” Carnegie Mellon Univ. v. Hoffmann-La Roche Inc.,
541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting In re Alton, 76
F.3d 1168, 1172 (Fed. Cir. 1996)). “In other words, the
applicant must ‘convey with reasonable clarity to those skilled
in the art that, as of the filing date sought, he or she was in
possession of the invention,’ and demonstrate that by disclosure
in the specification of the patent.” Id. (quoting Vas-Cath Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)).

Ariad Pharm., Inc. v. Eli Lilly and Co., 560 F.3d 1366, 1371-72 (Fed. Cir.
2009) (en banc).
Here, we find Appellant has not clearly conveyed rendering in the
display page, not in an external popup page. Although Appellant discusses
rendering in a display page (col. 10, l. 66 to col. 11, l. 30), Appellant does
not specify that rendering is not in an external popup page. Nor does
Appellant describe a reason to exclude rendering in an external popup page.
As such, we find Appellant has not conveyed with reasonable clarity to those
skilled in the art that they were in possession of the invention.
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Accordingly, the Examiner did not err in finding the invention as
recited in claim 1, and commensurately recited in claims 8, 16, 23, 30, 38,
and 45, fails to comply with the written description requirement. Therefore,
the Examiner did not err in rejecting claims 1, 8, 16, 23, 30, 38, and 45
under 35 U.S.C. §112, first paragraph.

ISSUE 2
35 U.S.C. § 251: Claims 1, 8, 16, 23, 30, 38, and 45 –
New Matter
Appellant argues the rejected claims do not recite new matter by
reciting “rendering in the display page, and not in an external popup page,”
as the Specification contains support for this recitation (App. Br. 13).

Issue 2: Has the Examiner erred in maintaining the limitation
“rendering in the display page, and not in an external popup page” recites
new matter not supported by the prior patent for which the reissue is sought
(U.S. 6,657,647)?
ANALYSIS
Appellant has not identified any portion of the Specification or
Drawings that excludes rendering in an external popup page from rendering
in the display page. Thus, we conclude there is no basis in the Appellant’s
Specification for adding the negative limitation.
Accordingly, the Examiner did not err in finding “rendering in the
display page, and not in an external popup page” constitutes new matter not
supported by the prior patent. Therefore, the Examiner did not err in
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rejecting claims 1, 8, 16, 23, 30, 38, and 45 under 35 U.S.C. § 251 as being
based upon new matter added to the patent for which reissue is sought.

ISSUE 3
35 U.S.C. § 103(a): claims 1, 4-8, 11-16, 19-23, 26-30, 33-38, and 41-45
Appellant asserts the claimed invention is not obvious over Allen and
Bates because the references, taken alone or in combination, do not teach or
suggest “rendering in the display page, and not in an external popup page . . .
the internal/external object that is identified to be nearest the location of the
cursor before rendering remaining internal and external objects,” as recited
in claim 1 (App. Br. 14-16). Specifically, Appellant contends the “internal
hypertext links” are merely links that cause a browser to jump between
sections of a webpage (App. Br. 15). According to Appellant, Bates teaches
internal navigation within a webpage using a link to an internal anchor – not
that an HTML snippet may need to be rendered before the link can be
properly used (id.).

Issue 3: Has the Examiner erred in finding the combination of Allen
and Bates teaches or suggests “rendering in the display page, and not in an
external popup page, by the computing device, the internal/external object
that is identified to be nearest the location of the cursor before rendering
remaining internal and external objects,” as recited in claim 1?

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ANALYSIS
We agree with the Examiner’s findings and conclusions and adopt
them as our own (Ans. 4-6). The Examiner finds Bates discloses that an
internal/external hyperlink object when rendered produces further
information about the selected hyperlink (Ans. 5). The Examiner further
finds that when an internal or external hypertext link is selected further or
detail information is rendered (id.). Further, the Examiner finds Bates
teaches placing the cursor proximate to internal hypertext link yields or
renders further detail information in the display page (which is not indicated
as an external popup page) (id.).
We agree with the Examiner that based on these findings, the
combination of Allen and Bates teaches or at least suggests “rendering in the
display page, and not in an external popup page, by the computing device,
the internal/external object that is identified to be nearest the location of the
cursor before rendering remaining internal and external objects,” as recited
in independent claim 1 and commensurately recited in independent claims 8,
16, 23, 30, 38, and 45. Dependent claims 4-7, 11-15, 19-22, 26-29, 33-37,
and 41-44, not separately argued, fall with their respective independent
claims. Therefore, the Examiner did not err in rejecting claims 1, 4-8, 11-
16, 19-23, 26-30, 33-38, and 41-45 under 35 U.S.C. § 103(a) for
obviousness over Allen and Bates.

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Application 11/286,446

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DECISION
The Examiner’s rejection of claims 1, 8, 16, 23, 30, 38, and 45 under
35 U.S.C. § 112, first paragraph for failure to comply with the written
description requirement is affirmed.
The Examiner’s rejection of claims 1, 8, 16, 23, 30, 38, and 45 under
35 U.S.C. § 251 as being based upon new matter added to the patent for
which reissue is sought is affirmed.
The Examiner’s rejection of claims 1, 4-8, 11-16, 19-23, 26-30, 33-38,
and 41-45 under 35 U.S.C. § 103(a) as being unpatentable over Allen and
Bates 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)(1)(iv) (2011).

AFFIRMED

ELD