Ex Parte Cragun et al

Board of Patent Appeals and Interferences

Jul 28, 2010

10731080 (B.P.A.I. Jul. 28, 2010)

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.
10/731,080 12/09/2003 Brian J. Cragun ROC920030193US1 3761
46797 7590 07/28/2010
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
LUDWIG, MATTHEW J
ART UNIT PAPER NUMBER
2178
MAIL DATE DELIVERY MODE
07/28/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRIAN J. CRAGUN, CHRISTINE A. GREV, and CALE T.
RATH
____________________

Appeal 2008-006215
Application 10/731,080
Technology Center 2100
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and DEBRA K.
STEPHENS, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL1

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.

Appeal 2008-006215
Application 10/731,080

I. STATEMENT OF CASE
Appellants appeal the Examiner’s final rejection of claims 1-4, and 6-
20 under 35 U.S.C. § 134(a). Claim 5 has been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

A. INVENTION
According to Appellants, the invention relates to the field of data
entry and retrieval and, more particularly, to annotating a variety of
heterogeneous data object types (Spec. 1, ¶ [0002]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and reproduced below:

1. A method for selecting an annotation structure for use
in entering annotation data, comprising:

receiving a request from a user to create an annotation for
at least one data object identified by a set of identifying
parameters; and

retrieving, from a configuration file, information
identifying at least one annotation structure associated with the
at least one data object based, at least in part, on the set of
identifying parameters and a role of the user, the annotation
structure defining one of more annotation fields into which
annotation data will be entered.

2
Appeal 2008-006215
Application 10/731,080

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gupta US 6,956,593 B1 Oct. 18, 2005

Claims 1-4 and 6-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gupta.

II. ISSUE
Has the Examiner erred in finding that Gupta would have suggested
retrieving “information identifying at least one annotation structure …, the
annotation structure defining one of more annotation fields into which
annotation data will be entered” (claim 1), as Appellants contend?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Gupta
1. Gupta discloses a structure for an annotation entry 180 that is
maintained by annotation server 10 in annotation meta data store 18,
wherein the annotation entry 180 includes a plurality of annotation
fields and wherein each of fields 182-204 is a collection of data which
define a particular characteristic of annotation entry (col. 7, ll. 28-39;
Fig. 4).
2. Annotation identifier field 194 stores data that uniquely identifies
annotation entry 180, related annotation identifier field 196 stores data
that uniquely identifies a related annotation, while set identifier field
3
Appeal 2008-006215
Application 10/731,080

198 stores data that identifies one or more sets to which annotation
entry 180 belongs (col. 9, ll. 1-16).
3. Which set an annotation belongs to is identified as whether the set is
“instructor’s comments”, “assistant comments”, “audio comments”,
“student questions”, and each student’s personal comments (col. 9, ll.
19-25).

IV. ANALYSIS
Claims 1-4, 6, and 11-17
As to independent claims 1 and 11, Appellants merely repeat the
language of claim 1 and assert that “[t]he cited section [of Gupta cited by the
Examiner] merely shows a field of an annotation” and thus “contains no
description of a further annotation structure which defines one or more
annotation fields into which annotation data will be entered” (App. Br. 11-
12). However, the Examiner finds that “[t]he limitation of ‘annotation
structure defining one or more annotation fields into which the annotation
will be entered’ is taught in Gupta as ‘annotation identifier field 194’ which
uniquely identifies a related annotations[sic]” (Ans. 15) .
Accordingly, we determine whether the Examiner erred in finding that
Gupta would have suggested retrieving “information identifying at least one
annotation structure …, the annotation structure defining one of more
annotation fields into which annotation data will be entered” as recited in
claim 1.
We give the claims their broadest reasonable interpretation. See In re
Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). Moreover, we will not read
4
Appeal 2008-006215
Application 10/731,080

limitations from the Specification into the claims. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993).
Claim 1 does not place any limitation on what an “annotation
structure” means, includes, or represents, other than reciting that the “the
annotation structure defining one or more annotation fields into which
annotation data will be entered.” In fact, claim 1 does not even define what
an “annotation field” is. We therefore interpret “annotation structure” as any
structure that defines an annotation field (one or more annotation fields),
wherein a field, given its ordinary meaning, can be any unit of a group.
Gupta discloses a structure for an annotation entry which includes a
plurality of annotation fields (FF 1), wherein the fields are defined as
“annotation identifier”, “related annotation identifier”, “set identifier” or the
like (FF 2). We agree with the examiner that “the annotation structure
defining one or more annotation fields” reads on Gupta’s annotation
identifier field (Ans. 15). That is, Gupta’s annotation identifier field is a
structure into which annotation data will be entered, wherein the annotation
identifier field defines the field as “annotation identifier” out of a group of
fields. Thus, contrary to Appellants’ arguments, the annotation identifier
field is an annotation structure which defines “one or more annotation
fields” (emphasis added).
Accordingly, we affirm the rejection of independent claim 1,
independent claim 11 falling therewith and claims 2-4, 6, and 12-17
respectively depending therefrom under 35 U.S.C. § 103(a) as being
unpatentable over Gupta.
Although Appellants adds a new argument in the Reply Brief that
“examples of set names do not teach the separate elements of a ‘set of
5
Appeal 2008-006215
Application 10/731,080

identifying parameters’ and a ‘role of the user’” (Reply Br. 3, emphasis
omitted), this argument could have been raised in the Appeal Brief. That is,
the Examiner’s Answer contains the same findings as those set forth in the
Final Rejection, and thus, does not necessitate this new argument by the
Appellants. It is inappropriate for Appellant to discuss for the first time in
the Reply Brief matters that could have been raised in the Appeal Brief.
“The failure to raise all issues and arguments diligently, in a timely fashion,
has consequences.” Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010)
(informative decision). Cf. Kaufman Company v. Lantech, Inc., 807 F.2d
970, 973 n.* (Fed. Cir. 1986) and McBride v. Merrell Dow and Pharms.,
Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986).
Claims 7-10
As to claim 7, Appellants argue that “Gupta merely discloses a user
interface … that is displayed before a user selects data to annotate and the
user interface for entering annotation information receives a user request to
add an annotation” (App. Br. 12). Thus, according to Appellants, “Gupta
does not teach, show or suggest generating based on an annotation structure,
an interface for entering annotation information to be associated with the
specified set of data points” (id), as required by claim 7.
We agree with Appellants. In particular, we find that the sections of
Gupta relied upon by the Examiner does not disclose any generation of an
interface based on the annotation structure, as required by claim 7. Rather,
as Appellants contend, the user interface of Gupta is displayed before the
annotation structure is added.
6
Appeal 2008-006215
Application 10/731,080

Accordingly, we reverse the rejection of independent claim 7 and
claims 8-10 depending therefrom under 35 U.S.C. § 103(a) as being
unpatentable over Gupta.
Claims 18-20
As to claim 18, Appellants contend that “Gupta does not describe
identifying at least one annotation structure associated with at least one data
point based on a set of identifying parameters and a role of the user” (App.
Br. 13). However, the Examiner finds that Gupta teaches “the available
media content such as ‘comments’ or ‘questions’ as identifying parameters,
and ‘instructor,’ ‘assistant,’ or ‘student’ as roles of the users” (Ans. 15 ).
Though Appellants argue in the Reply Brief that “even assuming,
arguendo, that such examples could be construed as teaching a ‘set of
identifying parameters’ and a ‘role of the user,’ Gupta does not teach using
them as a basis to retrieve any information” (Reply Br. 3, emphasis omitted),
such argument is not commensurate in scope with the language of claim 18.
That is, claim 18 does not recite any such “using them as basis to retrieve”
limitation.
Since Appellants do not provide any argument to dispute that the
Examiner has correctly shown where this claimed element is suggested in
Gupta, we find that the Examiner did not err in rejecting claim 18 over
Gupta. Accordingly, we affirm the rejection of claim 18 and claims 19-20
depending therefrom under 35 U.S.C. § 103(a).

V. CONCLUSIONS
Appellants have not shown that the Examiner erred in concluding that
claims 1-4, 6, and 11-20 are unpatentable over Gupta.
7
Appeal 2008-006215
Application 10/731,080

Appellants have shown that the Examiner erred in concluding that
claims 7-10 are unpatentable over Gupta.

VI. DECISION
The Examiner’s decision rejecting claims 1-4, 6, and 11-20 under
35 U.S.C. § 103(a) is affirmed, and the Examiner’s decision rejecting claims
7-10 under 35 U.S.C. § 103(a) is reversed.
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).

AFFIRMED-IN-PART

peb

IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
8