Ex Parte Dietz et al

Board of Patent Appeals and Interferences

May 20, 2010

10302467 (B.P.A.I. May. 20, 2010)

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 2009-004830
Application 10/302,467
Technology Center 2100
____________

Decided: May 20, 2010
____________

Before LANCE LEONARD BARRY, THU A. DANG, and JAMES R.
HUGHES, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1, 3-9, 11-16, 25, and 27-37.
The Appellants appeal therefrom under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
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INVENTION
The Appellants describe the invention at issue on appeal as follows.
The present invention is directed to a unique Web page function
that enables the interactive user to simply annotate a received
Web document/page with text and graphics entries that may be
stored separately from the stored Web page so that the
annotations track the stored Web page and, subsequently, may
be accessed and displayed whenever the Web page is accessed
and displayed. As a result, it is not necessary for the user to do
any editing in the HTML [i.e., hypertext markup language]
format of the Web page that remains unchanged.
(Spec. 3.)

ILLUSTRATIVE CLAIM
9. In a Web communication network with user access via a
plurality of data processor controlled interactive receiving
display stations for displaying received hypertext markup
language documents of at least one display page containing
text, images and a plurality of embedded hyperlinks to other
hypertext documents accessible from sources on the Web, a
method for annotating a displayed received document without
changing said received document content comprising;
displaying a received hypertext markup language
document at a receiving display station;
superimposing a transparent displayed layer over said
displayed received hypertext markup language document; and
enabling the user interactive entry of displayed data not
defined in hypertext markup language into said superimposed
layer relative in position to data in said underlying displayed
hypertext markup language document.

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Application 10/302,467

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PRIOR ART
Altman 2004/0163042 A1 Aug. 19, 2004
(filed Feb. 17, 2004)
Day 6,243,722 B1 June 5, 2001

REJECTION
Claims 1, 3-9, 11-16, 25, and 27-30 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Altman and Day.

CLAIM GROUPING
Based on the Appellants' arguments, we will decide the appeal of
claims 1, 3-9, 11-16, 25, and 27-30 based on claim 9 alone. See 37 C.F.R.
§ 41.37(c)(1)(vii).

FIRST ISSUE
The Examiner finds that Altman teaches the following limitations:
superimposing a transparent displayed layer over said
displayed received hypertext document (see paras [0041] and
[0047]: Altman teaches a means for superimposing an overlay
of annotations over the received hypertext document); and
. . . enabling the entry of displayed data not defined in
hypertext markup language into said superimposed layer
relative in position in said underlying displayed hypertext
document (see paras [0041-0047], and at least Figures 6- 12:
Altman teaches enabling the entry of textual and graphical
annotations into said superimposed layer relative in position to
said underlying original hypertext document).
(Answer 4.)
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The Appellants make the following arguments.
- Day does not superimpose a transparent layer over the
hypertext markup language document. Day opens a second
comment second window covering the underlying hypertext
document. Day's comment window is not transparent;
-Day does not enable the entry of data into the second
comment window which is relative in position to the data in the
underlying hypertext markup language document. There can not
be such a positional relationship because in Day, most of the
underlying hypertext document is covered by the opaque
comment window.
Finally, although Day is silent on this point, Examiner
assumes that, while the underlying Web document in Day is a
hypertext markup language document, the comments document
in the secondary comment window is not defined in hypertext
markup language. While Day is silent on this point, Examiner
assumes that since the comment document may be sent as an E-
mail document, it can not have a hypertext markup language
structure. There is little basis for such a conclusion. With the
commercial development of the Web, Web Mail, a form of E-
mail having Web document hypertext structure has been in use.
Thus, Examiner's conclusion that just because a document is E-
mail, it can not have a hypertext markup language structure is
not a reasonable one.
(Supp. App. Br. 3-4.)

ISSUE
Therefore, the issue before us is whether the Examiner has erred in
finding that Altman teaches superimposing a transparent layer over a
displayed document and enabling entry of non-HTML data into the
superimposed layer relative in position to data in the underlying document.

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LAW
"The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art." In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981)). "Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references." In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d at 425). In determining
obviousness, furthermore, a reference "must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole." Id.

ANALYSIS
Here, the Examiner's rejection of claim 9 is based on what the
combined teachings of Altman and Day would have suggested to one of
ordinary skill in the art. "The examiner concedes that Day does not teach
'superimposing a transparent displayed layer', however, this is not what the
examiner is using the Day reference for. Altman teaches transparent layers,
as shown above." (Answer 6.) Similarly, the Examiner relies on Altman,
rather than Day, to teach enabling entry of non-HTML data into the
superimposed layer relative in position to data in the underlying document.
The Appellants, however, attack Day individually. Such an attack cannot
establish non-obviousness.

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CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Examiner has not erred in finding that Altman teaches superimposing a
transparent layer over a displayed document and enabling entry of non-
HTML data into the superimposed layer relative in position to data in the
underlying document.

SECOND ISSUE
The Examiner finds and concludes that "[i]t would have been obvious
. . . to apply the separation of HTML and related E- mail annotations to
Altman's layered document annotation method, providing Altman the benefit
of non-intrusive and easy-to-use HTML document review (see Day
column 3 lines 59-61)." (Answer 4.) The Appellants argue that "[o]ne
skilled in art would not be expected to find anything in either of the two
references which would lead him to combine the references." (Supp. App.
Br. 4.) Their Reply Brief (p. 2) introduces the new argument that the
"disclosure of an unmodifiable PDF format for the underlying document of
Altman would lead one skill in the art away from considering the
substitution of an HTML document such as that taught by Day . . . ."

ISSUE
Therefore, the issue before us is whether the Examiner has erred in
combining teachings from Altman and Day.

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LAW
A reason to combine teachings from the prior art "may be found in
explicit or implicit teachings within the references themselves, from the
ordinary knowledge of those skilled in the art, or from the nature of the
problem to be solved." WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d
1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed.
Cir. 1998)).

Furthermore, "it is inappropriate for appellants to discuss in their reply
brief matters not raised in . . . the principal brief[ ]. Reply briefs are to be
used to reply to matter[s] raised in the brief of the appellee." Kaufman Co.
v. Lantech, Inc., 807 F.2d 970, 973 n* (Fed. Cir. 1986). "Considering an
argument advanced for the first time in a reply brief . . . is not only unfair to
an appellee but also entails the risk of an improvident or ill-advised opinion
on the legal issues tendered." McBride v. Merrell Dow & Pharms., Inc.,
800 F.2d 1208, 1211 (D.C. Cir. 1986) (internal citations omitted).
There are cogent reasons for not permitting an appellant to raise
issues or arguments in a reply brief. Among them are the
unfairness to the appellee who does not have an opportunity to
respond and the added burden on the court that a contrary
practice would entail. As the Tenth Circuit put it, permitting an
appellant to raise new arguments in a reply brief "would be
unfair to the court itself, which without the benefit of a
response from appellee to an appellant's late-blooming
argument, would run the risk 'of an improvident or ill-advised
opinion, given [the court's] dependence . . . on the adversarial
process for sharpening the issues for decision.'" Headrick [v.
Rockwell Int'l Corp.], 24 F.3d [1272,] 1278 [(10th Cir. 1994)],
(quoting Herbert v. Nat'l Acad. of Scis., 974 F.2d 192, 196
(D.C. Cir. 1992)).
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Carbino v. West, 168 F.3d 32, 34-35 (Fed. Cir. 1999). Therefore, "[a]ny
bases for asserting error, whether factual or legal, that are not raised in the
principal brief are waived." Ex parte Borden, No. 2008-004312, slip op. at 4
(BPAI 2010) (informative), available at http://www.uspto.gov/ip/boards/
bpai/decisions/ inform/fd08004312.pdf; see also Optivus Tech., Inc. v. Ion
Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not
raised by an appellant in its opening brief . . . is waived.") (citations and
quotation marks omitted).

FINDING OF FACT
The Examiner's finding and conclusion that "[i]t would have been
obvious . . . to apply the separation of HTML and related E- mail
annotations to Altman's layered document annotation method, providing
Altman the benefit of non-intrusive and easy-to-use HTML document
review (see Day column 3 lines 59-61)" in the Examiner's Answer (p. 4) is
identical to that in the Final Rejection (pp. 4-5).

ANALYSIS
Here, the Examiner bases his combination of teachings from Altman
and Day on Day's teaching of non-intrusive and easy-to-use HTML
document review. Such disclosed advantages belie the Appellants' argument
that one skilled in art would not be expected to find anything in either of the
two references which would lead him to combine the references.

Because the finding and conclusion that the Examiner makes in his
Answer is identical to that in the Final Rejection from which the instant
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appeal was taken, moreover, we find nothing that would have prompted the
new argument in the Reply Brief. The Appellants could have made the
argument in their Appeal Brief. The term "Reply Brief" is exactly that, a
brief in reply to new rejections or new arguments set forth in an Examiner’s
Answer. The Appellants may not present arguments in a piecemeal fashion,
holding back arguments until an examiner answers the original brief. This
basis for asserting error is waived.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Examiner has not erred in combining teachings from Altman and Day.

DECISION
We affirm the rejection of claims 1, 3-9, 11-16, 25, and 27-37.

No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Erc

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