Ex Parte Dietz et al

Board of Patent Appeals and Interferences

Aug 11, 2009

10324511 (B.P.A.I. Aug. 11, 2009)

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.
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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
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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.)
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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
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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
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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.

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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.

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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

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