Ex Parte Emmelmann

Board of Patent Appeals and Interferences

Feb 24, 2012

09449021 (B.P.A.I. Feb. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/449,021 11/24/1999 HELMUT EMMELMANN EMME-1000US0 5718
8685 7590 02/24/2012
DERGOSITS & NOAH LLP
Three Embarcadero Center
Suite 410
SAN FRANCISCO, CA 94111
EXAMINER
KENDALL, CHUCK O
ART UNIT PAPER NUMBER
2192
MAIL DATE DELIVERY MODE
02/24/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HELMUT EMMELMANN
____________________

Appeal 2012-001997
Application 09/449,021
Technology Center 2100
____________________

Before MARC S. HOFF, CARLA M. KRIVAK, and THOMAS S. HAHN,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 2, 22, 23, 26, 30, 32, 33, 41, 42, 59-63, 67-69, and 71-73.1,2 We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellant’s invention concerns developing server-side web
applications by composing them out of interactive server-side components
and placing them on a page template. The invention includes a browser-
based component editor that allows a user to remotely edit a running
application. A server transforms each page into a new page that contains
editing features (such as scripts and handles) for the page itself (Spec. 4-5).
Claims 1 and 26 are exemplary of the claims on appeal:
1. A computer-readable medium encoded with computer programs
having executable instructions for editing software applications that run on a
data network which couples a server computer and a client computer,
wherein the client computer runs a browser program, and whereupon request
by the browser program, at least one of the applications generates generated
documents for display by the browser program on a display device and
responds to the request with the generated documents, comprising:
a document generator program running at least part of one of the
applications being edited and generating the generated documents, said
generated documents including additional editing features for interpretation
by the browser program; and

1 Claims 6, 8, 51-58, 74-96, and 114-128 stand allowable. Claims 3-5, 24,
25, 27-29, 31, 43, 64-66, and 70 stand objected to as dependent upon a
rejected base claim, but would be allowable if rewritten in independent form.
Claims 9-21, 34-40, 44-50, and 97-113 stand withdrawn as directed to non-
elected subject matter. Claim 7 has been cancelled.
2 We note the petition decision mailed November 22, 2011, denying
Appellant’s request to reinstate claims 3-5, 24, 25, 27-29, 31, 43, 64-66, and
70.
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an editor program dynamically operating on the generated documents
displayed by the browser program via the editing features.
26. A system having a data network which couples a server computer
to a client computer, the server computer running an application to modify
dynamic documents on the server computer, the server computer
comprising:
a document store;
a first software program including instructions for transforming at
least one first document retrieved from the document store into a second
document having features which permit editing of the first document such
that at least a part of the second document appears and functions similar to
the run-time view of the first document; and
a second software program including instructions to receive
information from the client computer and instructions to modify the first
document stored in the document store.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Faustini US 5,842,020 Nov. 24, 1998
Arturo Crespo & Eric A. Bier, WebWriter: A Browser-Based Editor
for Constructing Web Applications, 28 COMPUTER NETWORKS & ISDN SYS.
1291 (1996) [hereinafter WebWriter].
Arturo Crespo et al., Responsive Interaction for a Large Web
Application: The Meteor Shower Architecture in the WebWriter II Editor, 29
COMPUTER NETWORKS & ISDN SYS. 1501 (1997) [hereinafter WebWriter II]
Claims 1, 2, 22, 23, 41, and 42 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over WebWriter II in view of Faustini.
Claims 26, 30, 32, 33, 59-63, 67-69, and 71-73 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over WebWriter in view of
Faustini.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed June 9, 2010), the Reply Brief (“Reply Br.,” filed Sep. 12,
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2011), and the Examiner’s Answer (“Ans.,” mailed July 12, 2011) for their
respective details.

ISSUES
Appellant argues generally, with respect to all claims, that none of the
cited references teach or suggest editing a “dynamic” web application that is
running at the server (Reply Br. 4).
With respect to independent claim 1, Appellant argues, inter alia, that
WebWriter II teaches a document generator that runs inside a web browser,
whereas the claimed invention requires a document generator that runs
outside (external to) the browser (Reply Br. 15).
With respect to independent claim 22, Appellant argues that neither
WebWriter II nor Faustini teaches or suggests the execution of components
by the document generator (Reply Br. 22).
With respect to independent claim 26, Appellant argues, inter alia,
that the combination of WebWriter and Faustini does not teach or suggest
generating documents for display by a browser from dynamic documents
(Reply Br. 25).
With respect to independent claim 59, Appellant argues, inter alia,
that the combination of WebWriter and Faustini fails to teach or suggest
dynamically editing dynamic web documents, or an editor program having
first instructions for requesting that the document generator program
processes a dynamic web document (Reply Br. 28-29).
Appellant’s contentions, and the Examiner’s findings, present us with
the following issues:
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1. Does the combination of WebWriter II and Faustini teach or fairly
suggest a document generator program running at least one of the
applications (that run on a data network) being edited and generating the
generated documents, as recited in claim 1?
2. Does the combination of WebWriter II and Faustini teach or fairly
suggest an editor program dynamically operated on the generated documents
displayed by the browser program, as recited in claim 1?
3. Does the combination of WebWriter II and Faustini teach or fairly
suggest a document generator program having instructions for executing
components on document templates, as recited in claim 22?
4. Does the combination of WebWriter and Faustini teach or fairly
suggest a server computer running an application to modify dynamic
documents on the server computer, as recited in claim 26?
5. Does the combination of WebWriter and Faustini teach or fairly
suggest an editor program for dynamically editing dynamic web documents,
as recited in claim 59?
6. Does the combination of WebWriter and Faustini teach or fairly
suggest an editor program comprising first instructions for requesting that
the document generator program processes a dynamic web document during
editing, as recited in claim 59?

FINDINGS OF FACT
Appellant’s Specification
1. Appellant’s invention creates server side internet applications by
placing interactive server side components (ISSCs) on internet pages (Spec.
5).
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2. The ISSC algorithm can be extended to create a browser based
editor that can place ISSCs on pages and to modify their properties: During
dynamic page generation, scripts and handles are embedded into the page
that permit editing of the page itself (id.).
Faustini
3. Faustini teaches a programming environment and appropriate tools
therefor that include the capability for dynamic editing of component objects
(col. 5, ll. 9-13).
4. Faustini teaches that its invention provides the dynamic editing
capability as soon as the component is instantiated or a component editing
request is made (col. 5, ll. 15-17).
5. Faustini teaches the dynamic editing of Java applets and
applications (col. 9, ll. 9-10; col. 10, ll. 13-26).

PRINCIPLES OF LAW
Section 103(a) 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). 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, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407 (“While the sequence of these questions might be reordered in
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any particular case, the [Graham] factors continue to define the inquiry that
controls.”).

ANALYSIS
CLAIMS 1, 2, 22, 23, 41, AND 42
The Examiner finds that WebWriter II teaches all the features of the
invention recited in independent claims 1 and 22, except for editing running
applications for generated documents (Ans. 26). The Examiner finds that
Faustini supplies this missing teaching (id.).
We disagree with the Examiner’s conclusion that the combination of
WebWriter II and Faustini renders the claimed invention obvious. We agree
with Appellant that the disclosed and claimed invention is directed to the
editing of server-side dynamic web applications that generate web pages for
transmission to and display by a web browser (Reply Br. 3; FF 1, 2).
Appellant correctly characterizes Faustini as being directed to the editing of
java applets and java components, which are client-side components (i.e.,
components run at the client) (FF 5). Accordingly, Faustini’s teaching of
“dynamic editing capability as soon as the component is instantiated or a
component editing request is made” (FF 4) has to do with the editing of a
running client-side component. We find that Faustini is not directed to
editing software applications that run on a data network and where, upon
request by a browser program, at least one of the applications generates
documents for display by the browser program, as claim 1 requires.
With respect to independent claim 22, we further agree with Appellant
that neither WebWriter II nor Faustini teaches a document generator
program for processing document templates and executing components.
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We therefore conclude that the Examiner erred in rejecting claims 1,
2, 22, 23, 41, and 42 as being unpatentable over WebWriter II in view of
Faustini. We will not sustain the rejection.
CLAIMS 26, 30, 32, 33, 59-63, 67-69, AND 71-73
For reasons similar to those expressed supra with respect to claims 1
and 22, we do not agree with the Examiner’s conclusion that the
combination of WebWriter and Faustini renders obvious the invention
recited in independent claims 26 and 59. Because we agree with Appellant
that Faustini teaches an editor for client-side components, we find that
neither WebWriter nor Faustini discloses a server computer running an
application to modify dynamic documents on the server computer, as claim
26 requires. Similarly, we find that neither WebWriter nor Faustini discloses
an editor program for dynamically editing dynamic web documents, said
documents operating by being transformed into an end user’s view upon
request by a web browser, as claim 59 requires.
We therefore conclude that the Examiner erred in rejecting claims 26,
30, 32, 33, 59-63, 67-69, and 71-73 as being unpatentable over WebWriter
in view of Faustini. We will not sustain the rejection.

CONCLUSIONS
1. The combination of WebWriter II and Faustini does not teach or
fairly suggest a document generator program running at least one of the
applications (that run on a data network) being edited and generating the
generated documents, as recited in claim 1.
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2. The combination of WebWriter II and Faustini does not teach or
fairly suggest an editor program dynamically operated on the generated
documents displayed by the browser program, as recited in claim 1.
3. The combination of WebWriter II and Faustini does not teach or
fairly suggest a document generator program having instructions for
executing components on document templates, as recited in claim 22.
4. The combination of WebWriter and Faustini does not teach or fairly
suggest a server computer running an application to modify dynamic
documents on the server computer, as recited in claim 26.
5. The combination of WebWriter and Faustini does not teach or fairly
suggest an editor program for dynamically editing dynamic web documents,
as recited in claim 59.
6. The combination of WebWriter and Faustini does not teach or fairly
suggest an editor program comprising first instructions for requesting that
the document generator program processes a dynamic web document during
editing, as recited in claim 59.

ORDER
The Examiner’s rejection of claims 1, 2, 22, 23, 26, 30, 32, 33, 41, 42,
59-63, 67-69, and 71-73 is reversed.

REVERSED

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