Ex Parte Dick et al

Patent Trial and Appeal Board

Mar 13, 2013

11042572 (P.T.A.B. Mar. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDREA DICK, THOMAS ANGLE,
EDWARD BLAZEJEWSKI, JOSEPH KENNEY,
CHAO-HEN KUO, and ROBERT MOLLOY
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Appeal 2010-009876
Application 11/042,572
Technology Center 2400
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Before ELENI MANTIS MERCADER, DENISE M. POTHIER, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-16. Br. 17.1 We have jurisdiction under 35 U.S.C. §
6(b). We affirm.

1 Throughout this opinion, we refer to: (1) the Appeal Brief (“Br.”) filed
January 19, 2010; (2) the Examiner’s Answer (“Ans.”) mailed March 15,
2010; and (3) the Specification (“Spec.”) filed January 24, 2005, as amended
January 24, 2005, and August 13, 2008.
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STATEMENT OF THE CASE
Invention
Appellants’ invention relates generally to methods and systems for
receiving a client request in a web service to retrieve document data from an
“IDARS/DOM” application repository. The retrieval is processed by
generating a request from the web service to the IDARS/DOM application
and receiving the requested document data therefrom. The received
document data is then formatted and transmitted from the web service to the
requesting client application. See generally Abstract.
Independent claim 1, which is illustrative of the invention, reads as
follows:
1. A method for accessing document data via a web service,
comprising:
receiving a request for document data from a client application,
the request for document data to be retrieved from a repository
managed by an integrated document archive and retrieval
systems/distributed output management (IDARS/DOM) application;
identifying a particular repository that contains the requested
document data;
accessing an administrative file, the administrative file
containing information regarding instructions for formatting access
requests to the particular repository for processing the request for
document data from the client application;
processing the request for document data including creating and
transmitting at least one access request to the particular repository and
receiving document data in response to each transmitted access
request;
formatting the document data received from the particular
repository; and
transmitting the formatted document data to the client
application.
The Examiner relies on the following as evidence of unpatentability:
Haverstock US 6,192,415 B1 Feb. 20, 2001
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Mein US 6,457,066 B1 Sept. 24, 2002
Roberts US 6,792,605 B1 Sept. 14, 2004
Brown US 2004/0199636 A1 Oct. 7, 2004

The Rejections
1. The Examiner rejected claims 1, 2, 5-9, and 12-15 under 35 U.S.C.
§ 103(a) as unpatentable over Haverstock and Brown. Ans. 3-6.
2. The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Haverstock, Brown, and Mein. Ans. 6-7.
3. The Examiner rejected claims 10 and 11 under 35 U.S.C. § 103(a)
as unpatentable over Haverstock, Brown, and Roberts. Ans. 7-8.
4. The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Haverstock, Brown, and Official Notice. Ans.
8-9.
Rather than repeat the various arguments here, we review the
respective positions of Appellants and the Examiner in discussing the
rejections below. Only those arguments actually made by Appellants have
been considered in this decision. Arguments that Appellants did not make in
the Appeal Brief have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2010).

ANALYSIS
REJECTIONS OF CLAIMS 1-15
The Examiner rejected claim 1 finding that Haverstock teaches all
steps except the “accessing” step. Ans. 3-4. The Examiner finds the
accessing step is taught by Brown and provides a rationale for the proposed
combination. Ans. 4. In reading the steps of claim 1 on Haverstock and
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Brown, the Examiner maps the recited “repository managed by an integrated
document archive and retrieval systems/distributed output management
(IDARS/DOM) application” to the non-HTML (HyperText Markup
Language) Server Module. Ans. 3, 10. Appellants argue that the Examiner
incorrectly construes the term “IDARS/DOM application” as any application
that manages the archiving and retrieval of documents. Br. 18.
Appellants argue that the Examiner must interpret the “IDARS/DOM
application” in accordance with a definition Appellants find in the
Specification. Br. 18-19. The purported definition broadly defines the term
“IDARS/DOM application” as systems that “help manage documents
destined for print” and conserve enterprise resources by electronically
storing single copies of documents and noted exemplary functions of IDARS
systems, including: “archiving, indexing, accessing, viewing, capturing
and/or printing document content” and notes that “DOM software typically
enables management of document delivery and/or distribution.” Spec.
2:23:29.
The Examiner asserts:
The appellant argues that IDARS and/or DOM
applications are defined and should be interpreted as an
application that performs each and every function of an
IDARS/DOM application. See id. The application’s
specification defines IDARS and DOM applications only in
terms of their typical functionalities. See Specification, pg 2,
lines 21 – 29. The appellant argues these functionalities are
required feature[s] and part of the definition of the IDARS or
DOM applications. See Brief, pg 18-19. This is not a proper
interpretation of those applications because the specification
only describes the functionality of the IDARS/DOM
applications as typical or exemplary. See Spec, pg 2. The
appellant does not address the idea that the IDARS or DOM
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application’s functionality or definition are concretely defined
and well known in the art. See Brief pg 18-19. As [a] result,
there does not appear to be any express definition or special
meaning of an IDARS or DOM application, thus the Examiner
must interpret an IDARS/DOM application [using] the broadest
reasonable interpretation in the context of the specification. See
MPEP § 2111.01(IV).
Ans. 9-10. We agree. Appellants have not cited any evidence of a widely
accepted definition of “IDARS/DOM application” as a term of art
understood by ordinary artisans. Rather, Appellants argue that the
Specification has clearly defined the term “IDARS/DOM application.” Br.
18-19.
For claim construction purposes, the description may act as a sort of
dictionary, which explains the invention and may define terms used in the
claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
1995). The caveat is that any special definition given to a word must be
clearly defined in the specification. Id. at 980. To act as its own
lexicographer, a patentee must “clearly set forth a definition of the disputed
claim term” other than its plain and ordinary meaning. CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
We agree with the Examiner that the Specification fails to provide a
clear, concrete definition of “IDARS/DOM application.” Nothing in this
language recites features or functions that must be provided in an
“IDARS/DOM application.” Rather, this language may be reasonably
understood to specify a list of typical features, any combination or subset of
which may define the operation of an exemplary “IDARS/DOM
application.” We find that the Examiner has properly construed the phrase
“IDARS/DOM application” in accordance with the broadest reasonable
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interpretation as encompassing the teachings of Haverstock’s non-HTML
Server Module. Thus, we find that the combination of Haverstock and
Brown teaches all features of claim 1.
In view of the above discussion, Appellants have not persuaded us of
error in the rejection of independent claim 1 and claims 2-15 not separately
argued with particularity. Br. 20-21.
REJECTION OF CLAIM 16
Claim 16 depends from claim 1 and recites the additional limitation:
“wherein the document data is in a print data format.” The Examiner
rejected this claim by taking Official Notice that: “an HTML request can
return data in the format which can be printed.” Ans. 9. Appellants argue
that the Specification provides a definition of “print data format” and that
the Examiner’s Official Notice disregards this definition. Br. 21-22. The
Specification allegedly defines “print data format” where it states:
Some data formats are print data formats such as advanced
function printing (“AFP”) for printing on z/OS attached all-
points-addressable printers or Xerox for printing on z/OS
attached Xerox printers. Such print data formats work well for
printing but are not compatible for display on a PC monitor, in
a web browser or for integration into another application.
Accordingly, exemplary web service 200 may provide the
ability to transform the data retrieved form [sic] repositories
150 into other document types such as PDF, XML or HTML.
Spec. 8:2-8.
Appellants argue that, by disregarding this definition, the Examiner’s
Official Notice fails to show the limitation of the document data being in a
“print data format.” Br. 21-22. As noted above, to give special meaning to a
phrase, the phrase must be clearly defined in the specification. See
Markman, 52 F.3d at 980; CCS Fitness, 288 F.3d at 1366. We find
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Appellants’ purported definition of “print data format” lacks sufficient
clarity to narrow the scope of claim 16 as urged by Appellants. Once again,
Appellants provide examples of some print data formats, but has not limited
the format exclusively to the described examples. See Spec. 8:2-8. As such,
the prior art or the noticed facts do not need to teach one of the specific
exemplary formats disclosed in the Specification.
Even assuming, arguendo, that the Specification provides a clear
definition of “print data format”, we do not import limitations of a specific
embodiment (e.g., AFP for printing on z/OS attached all-points-addressable
printers which would work well for printing but is not compatible for display
on a PC monitor) from the Specification into a claim if the claim language is
broader than the embodiment. See SuperGuide Corp. v. DirecTV Enter., Inc.,
358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim
language may be aided by explanations contained in the written description,
it is important not to import into a claim limitations that are not part of the
claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment”).
The Examiner clarified, as a basis for the Official Notice, that
Haverstock’s systems may process HTML requests for documents that are in
a printable format and that such documents may be in a variety of formats,
some of which may also be displayable and some of which may not be
displayed. Ans. 11-12. The Examiner further clarifies that Haverstock’s
systems may store a large variety of document types and may process
requests for any such document types. Id. While arguing that the Official
Notice fails “to disclose ‘wherein the document data is in a print data
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format’” and requests evidence to meet the claimed limitation (Br. 22),
Appellants have not specifically pointed out the supposed errors in the
Examiner’s action of taking Official Notice (see id.), including stating why
the noticed facts are not considered to be common knowledge or well-known
in the art. See MPEP § 2144.03(C). Moreover, Appellants have not
responded to the Examiner’s explanation in the Answer, such as by filing a
Reply Brief. On balance and based on the evidence of record, we will sustain
the rejection.
In view of the above discussion, Appellants have not persuaded us of
error in the rejection of dependent claim 16.

CONCLUSIONS
The Examiner did not err in rejecting claims 1-16 under § 103.

DECISION
The Examiner’s decision rejecting claims 1-16 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).

AFFIRMED

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