Ex Parte Dutta

Board of Patent Appeals and Interferences

Oct 3, 2006

09561181 (B.P.A.I. Oct. 3, 2006)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte Rabindranath Dutta
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Appeal No. 2006-0960
Application No. 09/561,181
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ON BRIEF
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Before HAIRSTON, BARRY, and MacDONALD, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
A patent examiner rejected claims 1-30. The appellant appeals therefrom under
35 U.S.C. § 134(a). We reverse and enter a new rejection under 37 C.F.R. § 41.50(b).
I. BACKGROUND
The invention at issue on appeal concerns saving content for later viewing.
Oftentimes, a user "surfing'' the Internet's World Wide Web ("Web") comes upon a Web
page he wants to retain for later viewing. (Spec. at 1.) Because current Web browsers
require such a user to divert his attention to perform a save operation, opines the
appellant, the browsers discourage the user from saving displayed content. (Id. at 2.)
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1"The drawing[s] in a nonprovisional application must show every feature of the
invention specified in the claims." 37 C.F.R. § 1.83(a). Here, we are unable to find the
claim's "separate window" in the appellant's drawings. Because "the Board is basically
a board of review," Ex parte Gambogi, 62 USPQ2d 1209, 1211 (Bd.Pat.App. & Int.
2001), however, we leave the issue of whether the appellant has satisfied the
requirement of §1.83(a) to him and the examiner.
For its part, the appellant's invention displays objects via a Web browser, with
content of some objects being displayed in separate windows. When a user selects the
displayed content, the content is added to a file. (Id.) A further understanding of the
invention can be achieved by reading the following claim.
1. A method for saving content of electronic objects displayed in a
computer viewer program, comprising:
presenting content in a page by the viewer program;
presenting content of an object in a separate window1 from the
page by the viewer program;
receiving user selection of a command with respect to the
presented content of the object; and
performing, in response to the user selection of the command:
(i) determining a repository file; and
(ii) appending content of the selected object to the
determined repository file, wherein the repository file is capable of
including content from multiple objects appended to the repository
file in response to previous user selections of the command and
wherein the content of each object included in the repository file
corresponds to content selected by the user.
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Application No. 09/561,181
Claims 1, 11, and 21 stand rejected under 35 U.S.C. § 102(b) as anticipated by
U.S. Patent No. 5,802,514 ("Huber"). Claims 8, 18, and 28 stand rejected under 35
U.S.C. § 103(a) as obvious over Huber. Claims 2, 5-7, 9-10, 12, 15-17, 19-20, 22, 25-
27, and 29-30 stand rejected under § 103(a) as obvious over Huber and U.S. Patent
No. 5,469,186 ("Ferguson"). Claims 3, 4, 13, 14, 23, and 24 stand rejected under
§ 103(a) as obvious over Huber and U.S. Patent No. 5,117,349 ("Tirfing").
II. OPINION
Our opinion addresses the rejections in the following order:
• Examiner's rejections
• Board's rejection.
A. EXAMINER'S REJECTIONS
Rather than reiterate the positions of the examiner or the appellant in toto, we
focus on points of contention therebetween. The examiner makes the following
assertions.
Huber discloses . . . presenting content in a page by the view program
(col. 1, lines 50-51, the representations of the database entries are
displayed); presenting content of an object in a separate window from the
page by the view program (col. 1, lines 51-52, an applications drawing
window is provided); . . . and . . . appending content of the selected object
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2"[T]he question whether a reference 'teaches away' from the invention is
inapplicable to an anticipation analysis." Celeritas Techs. Ltd. v. Rockwell International
Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522 (Fed. Cir. 1998).
to the determined repository file (col. 1, lines 64-65, the invention creates
within the repository an entry for the relationship). . . .
(Examiner's Answer at 3.) The appellant makes the following argument.
Because the command of the Huber patent teaches selection of database
entities from the GUI window (described by the Examiner as the content in
a page presented by the viewer program), rather than selection of items in
the application drawing window (described by the Examiner as content of
an object in a separate window), the Huber patent does not anticipate,
and, in fact, teaches away from,2 user selection of a command with
respect to the presented content of the object in the separate window from
the content of the page displayed by the viewer program.
(Appeal Br. at 8.) He also argues, "the Huber patent stores a relationship entry for a
database entity (where the database entity is selected by the user by dragging and
dropping) rather than storing the selected database entity, while claims 1, 11, and 21
are directed to storing the content of the object selected by the user." (Reply Br. at 3.)
In addressing the points of contention, the Board conducts a two-step analysis.
First, we construe the independent claims at issue to determine their scope. Second,
we determine whether the construed claims are anticipated or would have been
obvious.
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1. Claim Construction
"Analysis begins with a key legal question — what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). In answering the question, "the PTO gives claims their 'broadest reasonable
interpretation.'" In re Bigio, 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1211 (Fed. Cir.
2004) (quoting In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1668 (Fed. Cir.
2000)). "Moreover, limitations are not to be read into the claims from the specification."
In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) (citing
In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)).
Here, claims 1, 11, and 21 recite in pertinent part the following limitations:
presenting content in a page by the viewer program;
presenting content of an object in a separate window from the page by the
viewer program;
receiving user selection of a command with respect to the presented
content of the object; and
. . .
(ii) appending content of the selected object to the determined repository
file. . . .
Giving the independent claims their broadest, reasonable construction, the limitations
require displaying a page in a first window, displaying an object in a second window,
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and, upon a user's selection of the object from the second window, adding some
content of the selected object to a file.
2. Anticipation and Obviousness Determinations
"Having construed the claim limitations at issue, we now compare the claims to
the prior art to determine if the prior art anticipates those claims." In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002). "A claim
is anticipated only if each and every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art reference." Verdegaal Bros., Inc.
v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987) (citing
Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 715, 223 USPQ 1264,
1270 (Fed. Cir. 1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220
USPQ 193, 198 (Fed. Cir. 1983); Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771,
218 USPQ 781, 789 (Fed. Cir. 1983)). "[A]bsence from the reference of any claimed
element negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565,
1571, 230 USPQ 81, 84 (Fed. Cir. 1986).
Here, Huber "provides a tool for the development of multiple-table database
applications for client/server environments that automates both capture of system
requirements and code production." (Col. 1, ll. 41-44.) To design a database
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application, a "data model is opened so as to enable the various entities within the data
model to be viewed within a GUI (Graphical User Interface) window. In a preferred
embodiment, the tool provides a 'repository browser' (FIG. 2) that enables database
entities within the data model (Base Tables, QueryDefs, etc.) to be quickly and easily
located. An application drawing window is also opened, as shown in FIG. 3. The user
then drags and drops database tables (as defined above) onto the design area of the
application drawing window." (Col. 6, ll. 54-63.)
As aforementioned, the examiner reads the claims' first window on the
reference's data model window and the claims' second window on the reference's
application drawing window. Rather than selecting a database table from the
application drawing window, however, Huber's user selects it from the data model
window.
As also aforementioned, the examiner reads the claims' adding some content of
the selected object to a file on the reference's creating an entry for the relationship
between database tables within its repository. Storing an entry describing the
relationship between database tables, however, does not anticipate storing some
content of a selected database table.
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The absence of displaying a page in a first window, displaying an object in a
second window, and, upon a user's selection of the object from the second window,
adding some content of the selected object to a file negates anticipation. Therefore, we
reverse the anticipation rejection of claims 1, 11, and 21.
"In rejecting claims under 35 U.S.C. Section 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness." In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)). "'A prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary skill in the art.'" In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
Here, the examiner does not allege, let alone show, that the addition of Ferguson
or Tirfing cures the aforementioned deficiency of Huber. Absent a teaching or
suggestion of displaying a page in a first window, displaying an object in a second
window, and, upon a user's selection of the object from the second window, adding
some content of the selected object to a file, we are unpersuaded of a prima facie case
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of obviousness. Therefore, we reverse the obviousness rejection of claims 2-10, 12-20,
and 22-30, which depend from claims 1, 11, and 21.
B. BOARD'S REJECTION
We reject claim 1 under § 103(a) as obvious over the appellant's admitted prior
art ("AAPA") and Mark R. Brown et al., Special Edition Using Netscapeâ„¢ 2 (1995)
("Netscape"). The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and inherently. . . ."
In re Zurko, 258 F.3d 1379, 1383, 59 USPQ2d 1693, 1696 (Fed. Cir. 2001) (citing
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); In re
Dembiczak, 175 F.3d 994, 998, 50 USPQ2d 1614, 1616 (Fed. Cir. 1999); In re Napier,
55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995)).
Here, AAPA discloses that "[a]dvertisements are presented to lnternet users in . .
. separate advertisement windows," (Spec., p. 1, ll.16-17); "[w]ith separate advertise-
ment windows, when a user proceeds to a site, a separate browser window is opened
including the advertisement page," (id. at ll. 21-23); and "if the user is interested in the
advertisement, then the user must select the banner ad graphic or advertisement
window to view the advertisement page." (Id. at ll. 24-26.) We find that these
disclosures teach the following steps of the claim: "presenting content in a page by the
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viewer program; presenting content of an object in a separate window from the page by
the viewer program. . . ."
For its part, Netscape discloses a "Bookmark feature." (P. 213). Using this
feature, you may "notify[ ] Netscape that you want to save the URL of a specific Web
page." (P. 214.) One way of "add[ing] a Bookmark to your Bookmark list," (p. 215),
comprises "select[ing] Add Bookmark (Ctrl+D) from the Bookmarks pull-down menu.
The current page is added to the top of the list." (Id.) More specifically, "the bookmark
is saved as per the original file or document name." (P. 218.) "The Netscape
Bookmarks list includes all your saved Bookmarks with their addresses." (P. 215.)
Based on these disclosures, we find that Netscape responds to a user's selection of the
Add Bookmark command by identifying its "Bookmark list" file and appending some
content (viz., the name) of the specific Web page to the file, wherein the file also
contains the names of Web pages previously selected by the user.
"The presence or absence of a motivation to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203 F3d 1305,
1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994,
1000, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)). A suggestion to combine teachings
from the prior art "may be found in explicit or implicit teachings within the references
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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,
51 USPQ2d 1385, 1397 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355, 47
USPQ2d 1453, 1456 (Fed. Cir. 1998)).
Here, as aforementioned, AAPA discloses that a user may be interested in an
advertisement page. For its part, Netscape discloses that "Bookmarks are an extremely
useful feature of Netscape. They basically allow Netscape to remember whatever
places on the Web you tell it to remember." (P. 213.) "Bookmarks take away the
tedious task of having to write down or otherwise save each page's or document's URL
address." (P. 214.) We find that such benefits would have motivated those skilled in
the art to have combined a Bookmark feature with AAPA to append the name of the
specific advertisement page to the Bookmark list file. When the teachings of AAPA and
Netscape were so combined, we find that the combination would have suggested the
following steps of the claim:
receiving user selection of a command with respect to the presented
content of the object; and
performing, in response to the user selection of the command:
(I) determining a repository file; and
(ii) appending content of the selected object to the determined
repository file, wherein the repository file is capable of including content
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from multiple objects appended to the repository file in response to
previous user selections of the command and wherein the content of each
object included in the repository file corresponds to content selected by
the user.
Therefore, we reject claim 1. As aforementioned, The Board is basically a board
of review. Gambogi, 62 USPQ2d at 1211. Accordingly, we leave any further
determination of the obviousness of claims 2-30 in view of AAPA and Netscape to the
examiner and the appellant.

III. CONCLUSION
In summary, the examiner's rejection of claims 1, 11, and 21 under § 102(b) is
reversed. His rejections of claims 2-10, 12-20, and 22-30 under § 103(a) are also
reversed. A new rejection of claim 1 under § 103(a), however, is added.
37 C.F.R. § 41.50(b) provides that "[a] new grounds of rejection pursuant to this
paragraph shall not be considered final for judicial review." Section 41.50(b) also
provides that, within two months from the date of the decision, the appellant must
exercise one of the following options to avoid termination of proceedings of the rejected
claims:
(1) Submit an appropriate amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both, and have the matter
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Application No. 09/561,181
reconsidered by the examiner, in which event the proceeding will be
remanded to the examiner. . . .
(2) Request that the proceeding be reheard under 37 C.F.R. § 41.52 by
the Board upon the same record. . . .
No time for taking any action connected with this appeal may be extended under
37 C.F.R. § 1.136(a)(1)(iv).
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REVERSED
37 C.F.R. § 41.50(b)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ALLEN R. MacDONALD )
Administrative Patent Judge )
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KONRAD, RAYNES & VICTOR, L.L.P.
315 S. BEVERLY DRIVE, #210
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