Ex Parte DeHamer et alDownload PDFBoard of Patent Appeals and InterferencesJul 30, 201010677000 (B.P.A.I. Jul. 30, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BRIAN JAMES DEHAMER and SANKAR RAM SUNDAROSAN ____________ Appeal 2009-005197 Application 10/677,000 Technology Center 2100 ____________ Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and THU A. DANG, Administrative Patent Judges. BLANKENSHIP, 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 2009-005197 Application 10/677,000 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-3, 6-10, 13-17, and 20-24, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Representative Claim 1. A system, comprising: a controller generator that is adapted to provide an application with a controller that receives a request for data from a user and responds to the request by sending information to the user in a predetermined format; and a layout manager generator that is adapted to provide a layout manager that formats a c-frame2 based on configuration information and renders the c-frame as part of the information sent to the user in response to the request, wherein the configuration information corresponds to a plurality of portals, and wherein the layout manager is adapted to produce a different c-frame in response to requests received via each of the plurality of portals. 2 A “c-frame” is so named because the combination of the header, footer, and left side bar that frames Web page content resembles the letter “C.” See Spec. ¶ [0003]; Fig. 3. Appeal 2009-005197 Application 10/677,000 3 Examiner’s Rejections Claims 22-24 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1-3, 6-10, 13-17, and 20-24 stand rejected under 35 U.S.C. § 102(a) as being anticipated by Dan (US 6,560,639 B1). The Examiner has withdrawn a rejection of claims 22-24 under 35 U.S.C. § 101 as being directed to non-statutory subject matter (and/or for lacking utility) that was set forth in the Final Rejection. DISCUSSION Written Description Rejection Independent claim 22 recites a “tangible machine readable medium, comprising . . . .” The Examiner’s rejection of claims 22-24 for lacking written description support is based on the finding that the Specification does not disclose any “medium.” Somewhat belatedly, Appellants point out in the Reply Brief that original claim 22, which forms part of the Specification,3 recites a “machine readable medium.” Appellants also note, in the Appeal Brief, that the written description at paragraph [0018] states that the WPA (web presentation architecture) may be adapted to execute on a “processor-based device” such as a computer system. The original claims thus provide express support for a “machine readable medium,” and the written description provides at least inherent 3 See 35 U.S.C. § 112, second paragraph (“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”) (emphasis added). Appeal 2009-005197 Application 10/677,000 4 support for a “tangible machine readable medium,” since that is where programming normally resides in computer systems. We therefore are not persuaded that the Specification does not disclose any “medium.” We do not sustain the § 112, first paragraph rejection of claims 22-24. Anticipation Rejection Instant claim 1 recites a layout manager that formats a c-frame based on configuration information, wherein the configuration information corresponds to a plurality of portals, and wherein the layout manager is adapted to produce a different c-frame in response to requests received via each of a plurality of portals. Appellants and the Examiner debate the meaning of “portal.” However, the Specification indicates that a “portal” may be interpreted as an “access point.” See Spec. ¶ [0002] (“allow different groups of individuals to access information using different portals or access points.”). For the purposes of this appeal we can assume that the broadest reasonable interpretation of a “plurality of portals” includes within its meaning a Web page (containing hyperlinks) resident in a browser. Such an interpretation appears to be as broad as, or broader than, the Examiner’s reading of “portals.” However, we agree with Appellants to the extent that the rejection fails to show that Dan discloses producing a different c-frame in response to requests received via each of the plurality of portals, as claimed. The statement of rejection in the Answer is more specific than that set out in the Final Rejection, and relies on Figure 3 and text at column 20, lines Appeal 2009-005197 Application 10/677,000 5 35 through 42 of Dan for disclosure of producing “different” c-frames. Users (i.e., Web page developers) can use the Dan system to create or modify the “look and feel” of Web pages, which would include the ability to create or modify c-frames. Further, as the Examiner seems to indicate, different users can access a Web server using different types of browsers. However, it does not follow that a different c-frame is produced in response to requests received via each of the plurality of portals, as claimed. In particular, we have not been directed to any disclosure of different c-frames being produced based on the type of browser used to access the Web server. In short, there is not sufficient support in the reference for the Examiner’s conclusion (Ans. 12) that “the c-frame in Figure 13 [of Dan] is different based on tag attributes browsed in the user’ [sic] computer A or the user’s computer B.” In the Dan reference, it is the individual user (Web page developer) that determines the look, feel, and function of a Web page. See col. 20, l. 55 et seq. “[A]bsence from the reference of any claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986) (citation omitted), overruled on other grounds by Knorr- Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004). We therefore cannot sustain the § 102 rejection of claim 1. Because each of the other independent claims on appeal (8, 15, and 22) contains the same “different c-frame” language for which the rejection of claim 1 fails, we cannot sustain the rejection of any claim on appeal. Appeal 2009-005197 Application 10/677,000 6 DECISION The rejection of claims 22-24 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is reversed. The rejection of claims 1-3, 6-10, 13-17, and 20-24 under 35 U.S.C. § 102(a) as being anticipated by Dan is reversed. REVERSED msc HEWLETT-PACKARD COMPANY Intellectual Property Administration 3404 E. Harmony Road Mail Stop 35 FORT COLLINS CO 80528 Copy with citationCopy as parenthetical citation