Ex Parte Dietz et alDownload PDFBoard of Patent Appeals and InterferencesAug 11, 200910324511 (B.P.A.I. Aug. 11, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte TIMOTHY ALAN DIETZ, WALID KOBROSLY and NADEEM MALIK ____________________ Appeal 2008-0053321 Application 10/324,511 Technology Center 2100 ____________________ Decided: August 12, 2009 ____________________ Before ALLEN R. MacDONALD, Vice-Chief Administrative Patent Judge. JAMES D. THOMAS and JEAN R. HOMERE, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 Filed December 19, 2002. The real party in interest is IBM Corp. Appeal 2008-005332 Application 10/324,511 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1 through 34. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention As shown in Figures 3 through 7, Appellants invented a method and system for extracting designated numerical data (71, 72, 73) from a webpage (70), and for subsequently copying the extracted data onto a transparent spreadsheet (74) superimposed on the webpage. (Spec. 11, ll. 9-18.) Illustrative Claim Independent claim 1 further illustrates the invention. It reads as follows: In a communication network with user access via a plurality of data processor controlled interactive receiving display stations for displaying received documents of at least one display page containing text and images, and available from sources on the network, a system for extracting and processing numerical data from the received document comprising: means at a receiving display station for displaying the received network document; means for superimposing a transparent displayed layer over said displayed received network document; user interactive means enabling the entry of displayed data into said superimposed layer designating numerical data in said underlying displayed network document; and Appeal 2008-005332 Application 10/324,511 3 means for copying said designated numerical data into said superimposed layer. Prior Art Relied Upon The Examiner relies on the following prior art as evidence of unpatentability: Freivald 5,983,268 Nov. 9, 1999 McGarry 6,859,907 Feb. 22, 2005 Rejection on Appeal The Examiner rejected the claims on appeal as follows: Claims 1 through 34 stand rejected as being unpatentable over the combination of Freivald and McGarry. Appellants’ Contentions Appellants contend that the combination of Freivald and McGarry does not render the claimed invention unpatentable. (App. Br. 4-6.) In particular, Appellants argue that the cited combination does not teach copying designated numerical data from an underlying displayed webpage into a displayed spreadsheet superimposed thereon, as recited in independent claim 1. (Id.) Appeal 2008-005332 Application 10/324,511 4 Examiner’s Findings The Examiner finds that Freivald’s disclosure of inserting numerical values extracted from a webpage into a spreadsheet, taken in combination with McGarry’s disclosure of a semi-transparent spreadsheet superimposed on a data object, teaches the cited limitations. (Ans. 13-18.) II. ISSUE Have Appellants shown that the Examiner erred in concluding that the combination of Freivald and McGarry renders claim 1 unpatentable? In particular, the issue turns on whether the cited combination teaches or suggests copying designated numerical data extracted from a webpage into a transparent layer superimposed thereon. III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Freivald 1. As shown in Figure 2, Freivald discloses a method for extracting numerical data from a webpage and for subsequently copying the extracted data into a spreadsheet. (Abstract, ll. 1-8, col. 6, ll. 28-32.) McGarry 2. As shown in Figure 3, McGarry discloses a method for improving a semitransparent spreadsheet for machine vision applications by Appeal 2008-005332 Application 10/324,511 5 superimposing the spreadsheet on data objects thereby incorporating the overlaid objects in the spreadsheet. (Abstract, col. 3, ll. 23-28.) IV. PRINCIPLES OF LAW Obviousness Appellants have the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection [under § 103] by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Section 103 forbids issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In KSR, the Supreme Court emphasized "the need for caution in granting a patent based on the combination of elements found in the prior art" and discussed circumstances in which a patent might be determined to be obvious. Id. at 401 (citing Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966)) (citation omitted). The Court reaffirmed principles based on its precedent that "[t]he combination of familiar elements according to known Appeal 2008-005332 Application 10/324,511 6 methods is likely to be obvious when it does no more than yield predictable results." Id. at 416. The operative question in this "functional approach" is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id. at 415, 417. The Federal Circuit recently recognized that "[a]n obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 416). The Federal Circuit relied in part on the fact that Leapfrog had presented no evidence that the inclusion of a reader in the combined device was “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art." Id. at 1162 (citing KSR, 550 U.S. at 417- 418). V. CLAIM GROUPING Appellants argue the patentability of the claims 1 through 34 as a single group. In accordance with 37 C.F.R. § 41.37(c)(1)(vii), we will consider these claims as standing and falling with representative claim 1. Appeal 2008-005332 Application 10/324,511 7 VI. ANALYSIS Independent claim 1 requires, in relevant part, copying designated numerical data from a webpage into a transparent layer superimposed thereon. As set forth in the Findings of Facts section, Freivald discloses copying numerical data extracted from a webpage into a spreadsheet. (FF. 1.) Further, as noted by Appellants, McGarry discloses superimposing a semitransparent spreadsheet on an object to identify the layers of the superimposed object. (FF. 2, App. Br. 5.) We find that Freivald and McGarry disclose prior art elements that perform their ordinary functions to predictably result in a system that copies numerical data from a webpage onto a semitransparent spreadsheet superimposed thereon. In other words, we agree with the Examiner that a person of ordinary skill in the art would have appreciated that, by superimposing McGarry’s semitransparent spreadsheet onto Freivald’s webpage, a user of the system could readily copy desired numerical data from the webpage onto the superimposed spreadsheet. Further, assuming that the Examiner must provide a rationale for combining the cited references, we find that one of ordinary skill in the art would appreciate that McGarry’s transparent layer would allow users of Freivald’ system to readily identify the different layers of the webpage including the numerical data upon which the spreadsheet is superimposed. It follows that Appellants have not shown that the Examiner erred in concluding that the suggested combination renders claim 1 unpatentable. Appeal 2008-005332 Application 10/324,511 8 VII CONCLUSION OF LAW Appellants have not established that the Examiner erred in rejecting claims 1 through 34 as being unpatentable under 35 U.S.C. § 103(a). VIII DECISION We affirm the Examiner's rejection of claims 1 through 34. 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 dal J. B. Kraft 710 Colorado Street #5C Austin TX 78701 Copy with citationCopy as parenthetical citation