Ex Parte Dunietz et al

Board of Patent Appeals and Interferences

Nov 23, 2009

09552262 (B.P.A.I. Nov. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JERRY DUNIETZ, NATHAN LEWIS, and JASON HILLS
____________

Appeal 2009-0041111
Application 09/552,262
Technology Center 2100
____________

Decided: November 23, 2009
____________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and JAMES R. HUGHES,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

1 An oral hearing was held in this appeal on November 4, 2009.
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I. STATEMENT OF THE CASE
The Patent Examiner rejects claims 1-35. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

A. INVENTION
The invention at issue on appeal relates to the display of electronic
documents and, in particular, to a technique for pre-computing and encoding
an electronic document to minimize run-time computational requirements
for parsing and search operations. (Spec. 1.)

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A method for encoding an electronic document
having markup language content, wherein the document
includes at least one tag and an associated content, the
method comprising the steps of:

(a) separating the tag from the content with a
separation variable;

(b) replacing the tag with an alias, wherein the
alias is a pre-defined representation for the tag; and

(c) inserting at least one flag within the tag to form
an encode tag structure, wherein a first encoded
document is formed.

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C. REFERENCES
The Examiner relies on the following references as evidence:

Tada 5,745,745 Apr. 28, 1998
Carus 6,035,268 Mar. 7, 2000

Open eBook™ Publication Structure 1.0 (Sept. 16, 1999) (hereinafter
“open eBook”).

D. REJECTIONS
Claims 1, 2, 5, 7, 9, and 16-21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Tada.
Claims 3, 4, 8, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tada in view of Open eBook.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tada as applied to claim 1 above, and further in view of Carus.
Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tada, in view of Carus.
Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tada.
Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Open eBook.
Claims 24-35 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Open eBook in view of Tada.

II. ISSUE
Have Appellants shown error in the Examiner’s initial showing of
obviousness for each of the separate rejections?
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III. PRINCIPLES OF LAW

Prima Facie Case of Unpatentability
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for its rejection of an
application under 35 U.S.C. §§ 102 and 103. In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016 (CCPA
1967)). The Examiner bears the initial burden of presenting a prima facie
case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellants have the opportunity on appeal to the Board of Patent Appeals
and Interferences (BPAI) to demonstrate error in the Examiner’s position.
See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

Obviousness
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13 (1966). The
question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art. Graham, 383 U.S. at 17-18. See also KSR, 550 U.S. at
407 (“While the sequence of these questions might be reordered in any
particular case, the [Graham] factors continue to define the inquiry that
controls.”)

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IV. ANALYSIS
We address the claims in the order addressed in Appellants' Brief.
With respect to independent claim 1, Appellants argue that Tada fails
to disclose or suggest claimed features of "inserting at least one flag within
the tag to form an encode tag structure" as recited in independent claim 1.
(App. Br. 15-16.) Appellants argue that the relied upon text of Tada teaches
that the start tag is replaced by the control code "α." Appellants also assert
that the Examiner maintains the control code is the flag, and if so, then the
flag is not inserted within the tag to form an encode tag structure since Tada
teaches replacing the tag with the flag. (App. Br. 16.) We note that the
Examiner does not respond to Appellants' arguments set forth at pages 14
through 17 of the Appeal Brief. Since the Examiner has not responded
Appellants’ argument which sets forth a reasonable interpretation of the
teachings of Tada, we find that Appellants have shown error in the
Examiner's initial showing of obviousness of independent claim 1.
Therefore, we will additionally reverse the rejection of dependent claims 2,
5, 7, and 9 as containing the same deficient rejection as discussed above with
respect to independent claim 1. We also note that although claim 9 is an
independent claim directed to a different statutory class of invention, the
rejection would similarly be deficient for the reasons discussed above.
With respect to independent claim 16, Appellants argue that Tada fails
to disclose or suggest "inserting at least one code character into the
electronic document to separate markup language from content." (App. Br.
17.) Appellants maintain that the Examiner is using the present application
as a blueprint to reject the present claim(s) (App. Br. 17-18), but Appellants
do not specifically address the Examiner’s stated correlation of the teachings
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and suggestions of Tada. Therefore, Appellants' argument is not persuasive
of error in the Examiner's initial showing of obviousness. Appellants further
argue that Tada fails to disclose or suggest the claimed feature of "replacing
the tag with an alias, whereby the tag may be readily identified during run-
time parsing of the document" as recited in claim 16. (App. Br. 18.)
Appellants contend that the relied upon portion of Tada at column 22 merely
teaches replacing content such as a character string rather than replacing a
tag with an alias. (App. Br. 18). Appellants have identified no express
definition for the "tag" or the "alias." We agree with the Examiner’s finding
that Tada teaches and fairly suggests “replacing the tag with the alias,” and
specifically that Tada teaches replacing the start tag by the control code “α.”
Appellants present no persuasive argument to the contrary Therefore,
Appellants have not shown error in the Examiner's initial showing of
obviousness of independent claim 16 and dependent claims 17-18 which are
grouped therewith due to lack of separate arguments for patentability.
With respect to independent claim 19, Appellants argue that Tada fails
to disclose or suggest "at least one tag having encoded therein a
predetermined integer alias for the tag" as recited in independent claim 19.
(App. Br. 19.) Appellants have not identified why the use of the specific
control code "α" would not have taught or suggested the "predefined integer
alias for the tag" as claimed. Therefore, Appellants' argument is
unpersuasive of error in the Examiner's initial showing of obviousness.
Appellants further argue that Tada fails to disclose or suggest the
claimed feature of "a code separating the tag from the content portion,
whereby the content and markup within the documents may be readily
parsed at run-time" as recited in independent claim 19. (App. Br. 20.)
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Appellants have not defined or identified a definition of the code separating
the tag from the content portion to limit the Examiner's interpretation
thereof. We find Tada teaches delimiters which set off and define the tag
and the content therein as shown in column 22 with the start character and
the end character. Therefore, Appellants' argument is not persuasive of error
in the Examiner's initial showing of obviousness of independent claim 19,
and dependent claim 20.
With respect to dependent claims 3, 4, 8, 22, and 23, Appellants have
not set forth separate arguments for patentability and rely upon the
arguments advanced with respect to independent claim 1 and independent
claim 19. Therefore, we will reverse the rejection of claims 3, 4, and 8
claims of standing with independent claim 1 and sustain the rejection of
dependent claims 22 and 23 falling with their respective independent claim
19. (App. Br. 20.)
With respect to dependent claims 6, the Examiner relies upon the
teachings of Carus concerning comparing the left and right terms to
determine if they are part of a single word, but the Examiner does not
identify how Carus remedies the above noted deficiency in independent
claim 1. Appellants rely upon the argument advanced with respect to
independent claim 1 (even though Appellants identify Tada and open eBook
as the combination). We agree with Appellants that Carus (the correct
secondary reference) does not remedy the deficiencies in Tada, and we find
that Appellants have identified error in the Examiner's initial showing of
obviousness of dependent claims 6. (App. Br. 21.)
With respect to independent claim 10, Appellants argue that the
determination of concatenation between successive characters, a break
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between successive characters, or an unknown transition between successive
characters does not disclose, teach, or suggest the claimed feature of
"identifying a tag between a left and a right term was in a document" and
"determining whether the tag is within a single word." (App. Br. 21-22.)
We find Appellants' arguments unavailing since we find Carus teaches
and fairly suggests identifying a tag between a left and right term within a
document and determining whether the tag is within a single word in
columns 2 and 3. Therefore, we find Appellants' arguments unpersuasive of
error in the Examiner's initial showing of obviousness of independent claim
10 and dependent claim 11 which is grouped therewith since Appellants
have not set forth separate arguments for patentability thereof.
With respect to independent claim 12, Appellants argue that Tada fails
to teach the claimed element, "if the portion is not to be displayed for
viewing, inserting a no search flag in association with the portion, whereby
in no search field may be readily identified and skipped during a run-time
linear search." (App. Br. 22.) The Examiner admits at page 18 of the
Answer that Tada does not teach a no search flag is conditionally inserted
based upon determining whether the portion is to be displayed for viewing.
What the Examiner concludes is that it would have been obvious to one of
ordinary skill in the art at the time of the invention to have modified Tada
"to have created the claimed invention." (Ans. 18.) Here, the Examiner
appears to speculate and to invite a skilled artisan to create and to invent
rather than to merely modify the teachings of Tada based upon what was
known in the prior art at the time of the invention based upon some objective
evidence of administrative record. We find no objective teaching with
which to make the desired modification the Examiner proposes in the record
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before us. Therefore, Appellants have shown error in the Examiner's stated
rejection, and we are constrained to reverse the rejection of independent
claim 12 and its dependent claim 13 which has not been argued separately.
With respect to independent claim 14, Appellants contend that "the
reference Open eBook does not disclose, teach, or suggest the claimed
feature of "replacing part of the URL with the reference string and a flag for
the file." (App. Br. 23.) From our review of the Examiner’s stated rejection
at pages 18-20 of the Answer, we find the Examiner does not specifically
address this limitation in the statement of the rejection, and the Examiner
does not address independent claim 14 in any of the responsive arguments in
the Answer. Therefore, Appellants have shown error in the Examiner's
proffered original presentation of a prima facie case of obviousness. Since
the Examiner has not addressed all of the limitations and the Examiner has
not responded to Appellants' argument, we are constrained to reverse the
Examiner's rejection of independent claim 14 and its dependent claim 15.
With respect to independent claims 24 and 32, Appellants merely
argue the motivation for the combination of Open eBook and Tada and
Appellants do not show error in the Examiner's statement for the
combination of teachings. Therefore, Appellants have not shown error in the
Examiner's initial showing of obviousness of independent claims 24 and 32.
Since Appellants have not separately argued dependent claims 25-31 and 33-
34, we will group these claims as falling with their respective independent
claims. We note that dependent claim 35 is directed to the same scope as
independent claim 32 and has not been separately argued. Therefore, we
will group with independent claim 32.

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V. CONCLUSION
For the aforementioned reasons, the Appellants have shown error in
the Examiner’s initial showing of obviousness of claims 1-9 and 12-15, but
have not shown error in the Examiner’s initial showing of obviousness of
claims 10, 11, and 16-35.

VI. ORDER
We reverse the obviousness rejection of claims 1-9 and 12-15 and
affirm the obviousness rejections of claims 10, 11, and 16-35.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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