Ex Parte Ethier et al

Board of Patent Appeals and Interferences

Apr 8, 2008

10409622 (B.P.A.I. Apr. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER ETHIER, JOHN P. BRINKMAN,
GAVIN MCKENZIE and CARL W. ORTHLIEB
____________

Appeal 2008-0128
Application 10/409,622
Technology Center 2100
____________

Decided: April 8, 2008
____________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-66. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
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A. INVENTION
The invention at issue involves conversion of document formats
(Spec. 1). In particular, a document in a binary format is reformed into a
markup language format using information selected from the electronic
document in the binary format, and an encoded version of the electronic
document in the binary format is inserted into the electronic document in the
markup language format (id. 4).

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows:
1. A method comprising:
obtaining an electronic document in a binary format;
transforming the electronic document into a markup language format
by
extracting a subset of information from the electronic document
in the binary format according to predefined extraction
parameters,
incorporating the subset of the information into new portions of
the electronic document in the markup language format,
and
inserting an encoded version of the electronic document in the
binary format into the electronic document in the markup
language format; and
using the transformed electronic document.

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C. REJECTIONS
Claims 1-13, 16, 17, 21-37, 40-42, 44-50, 52-55, 57, 58, 61, 62, 65
and 66 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
U.S. Patent Publication No. 2003/0131312 (“Dang”) and U.S. Patent No.
6,336,124 (“Alam”). Claims 14, 15, 38, 39, 51, 56, 59, and 60 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Dang, Alam, and U.S.
Patent No. 6,609,200 (“Anderson”). Claims 18-20, 42, 43, 63, and 64 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Dang, Alam,
and U.S. Patent Publication No. 2004/0103367 (“Riss”). As noted above,
claim 42 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
both over Dang and Alam and over Dang, Alam, and Riss.

II. CLAIM GROUPING
“When multiple claims subject to the same ground of rejection are
argued as a group by appellant, the Board may select a single claim from the
group of claims that are argued together to decide the appeal with respect to
the group of claims as to the ground of rejection on the basis of the selected
claim alone. Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant has grouped
together shall constitute a waiver of any argument that the Board must
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consider the patentability of any grouped claim separately.” 37 C.F.R.
§ 41.37(c)(1)(vii) (2006).1
Appellants argue claims 1-66 as a group (App. Br. 7-13). We select
claim 1 as the sole claim on which to decide the appeal of the group of
claims 1-13, 16, 17, 21-37, 40, 41, 42, 44-50, 52-55, 57, 58, 61, 62, 65, and
66 (the first group); claim 14 as the sole claim on which to decide the appeal
of the group of claims 14, 15, 38, 39, 51, 56, 59, and 60 (the second group);
and claim 18 as the sole claim on which to decide the appeal of the group of
claims 18-20, 42, 43, 63, and 64 (the third group).

III. CLAIMS 1-13, 16, 17, 21-37, 40, 41, 42, 44-50, 52-55, 57, 58, 61, 62,
65, AND 66
As set forth above, we select claim 1 as the sole claim on which to
decide the appeal of the first group. “Rather than reiterate the positions of
parties in toto, we focus on the issue therebetween.” Ex Parte Filatov, No.
2006-1160, 2007 WL 1317144, at *2 (BPAI 2007).
Appellants argue that “Dang could not teach or suggest a single
reversible document with two distinct states” and therefore “does not render
Claim 1 obvious” (App. Br. 8). First, we note that the Examiner has not

1 We cite to the version of the Code of Federal Regulations in effect at the
time of the Appeal Brief. The current version includes the same rules.

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rejected claim 1 as obvious over Dang alone. The Examiner states that
“none of the independent claims recite ‘a single reversible document.’”
(Ans. 24). We agree with the Examiner that claim 1 does not recite “a single
reversible document.” “Moreover, limitations are not to be read into the
claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
Therefore, we find Appellants’ argument unpersuasive.
Appellants also argue that “Alam fails to teach or suggest that the
intermediate/storage format document (or the final output document)
includes an encoded version of the input document in binary format inserted
into a document in the markup language format” (App. Br. 9) and that
“Alam neither describes nor suggests inserting an encoded version of an
electronic document in a binary format into an electronic document in a
markup language format” (App. Br. 10-11). The Examiner defines the term
“encode” to include putting “into code” and formatting electronic data
“according to a standard format” (Ans. 26). Appellants do not dispute these
definitions.
Alam discloses that document formats “may include one or more
versions of HTML, XML, PDF, RTF, CSS, Netscape Layers, linked and
separate pages, . . . TIFF . . . or any other image format . . .” (col. 5, ll.
29-32). Also, a “repository . . . stores the input documents in the input
format as well as the one or more storage formats” (col. 22, ll. 21-23) such
that “a single converted document may be generated containing the input
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document in multiple storage formats” (col. 22, ll. 26-27). Because Alam
discloses that the document is formatted in any one of an input or storage
format, we agree with the Examiner that Alam “encodes” the document (i.e.,
formats data according to a standard format). Additionally, Alam discloses
“encoding” an input document (i.e., formatting according to a format) that is
any input format including PDF format (i.e., binary format) or HTML
format and inserting the encoded document into a “single converted
document” that contains the document in “multiple storage formats” (col.
22, ll. 27-28). Because the “multiple storage formats” include “one or more
versions of HTML, XML, . . .” (col. 5, ll. 29-30), we agree with the
Examiner that the “encoded” PDF format is inserted into an electronic
document in a markup language format (i.e, HTML or XML).
In addition, Appellants argue that because Alam discloses “‘what is
needed are accurate and efficient systems and methods for converting a
document stored in one format to a different format . . .’ . . . This fails to
provide a motivation to make the specific combination being proposed by
the Examiner” (App. Br. 11-12). As discussed above, both Dang and Alam
disclose systems and methods for converting documents between formats
using elements that would have been known to those of ordinary skill in the
art. Also as discussed above, the cited references disclose such known
features as incorporating information into an electronic document in markup

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language format and inserting an encoded version of a document in one
format (such as binary format) into an electronic document in another format
(such as markup language format), as recited in claim 1. Such
rearrangement of known elements to achieve predictable results would have
been obvious to one of ordinary skill in the art. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results. . . . [W]hen a patent 'simply
arranges old elements with each performing the same function it had been
known to perform' and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR Intern Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1739-40 (citing Sakraida v. AG Pro, Inc., 425 U.S. 273,
282 (1976)).
Appellants, while asserting that a need for “accurate and efficient
systems and methods for converting a document . . . fails to provide a
motivation to make the specific combination being proposed by the
Examiner” (App. Br. 12), fail to provide a rationale as to how the
combination of references providing predictable results using arrangements
of known elements would not have been obvious to one of ordinary skill.
Therefore, we are unconvinced by Appellants’ arguments.
Appellants also assert that Alam discloses “the intermediate/storage
format ‘is preferably a format that can be easily utilized to transfer the data
representing the contents of the documents to any other desired output
format.’ (Alam: Col. 6, lines 50-52.)” (App. Br. 12). Based on this
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contention, Appellants conclude that Alam “suggests that the included
multiple formats are . . . not in encoded versions of those formats” (App. Br.
12) and that “encoding the multiple formats into a markup language format
would run counter to the purpose of Alam, since this encoded data would
then have to be unencoded before the output documents can be generated”
(App. Br. 12). As discussed supra, we agree with the Examiner that Alam
discloses “encoding” data.
It follows that Appellants have failed to demonstrate that the
Examiner erred in rejecting claim 1. Therefore, we affirm the rejection of
claim 1 and of claims 2-13, 16, 17, 21-37, 40, 41, 42, 44-50, 52-55, 57, 58,
61, 62, 65, and 66, which fall therewith.

IV. CLAIMS 14, 15, 38, 39, 51, 56, 59, AND 60
As set forth above, we select claim 14 as the sole claim on which to
decide the appeal of the second group. Appellants have not argued any
claim in this group.
Appellants argue that “Anderson and Riss, alone or in combination,
fail to remedy the deficiencies of Dang and Alam, alone or in combination”
(App. Br. 11). As set forth above, we find that Appellants have failed to
establish deficiencies of Dang and Alam. Additionally, Riss is not used by
the Examiner to reject these claims.
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It follows that Appellants have failed to demonstrate that the
Examiner erred in rejecting claim 14. Therefore, we affirm the rejection of
claim 14 and of claims 15, 38, 39, 51, 56, 59, and 60, which fall therewith.

V. CLAIMS 18-20, 42, 43, 63, AND 64
As set forth above, we select claim 18 as the sole claim on which to
decide the appeal of the third group. Appellants have not argued any claim
in this group.
“Anderson and Riss, alone or in combination, fail to remedy the
deficiencies of Dang and Alam, alone or in combination” (App. Br. 11). As
set forth above, we find that Appellants have failed to establish deficiencies
of Dang and Alam. Additionally, Anderson is not used by the Examiner to
reject these claims.
It follows that Appellants have failed to demonstrate that the
Examiner erred in rejecting claim 18. Therefore, we affirm the rejection of
claim 18 and of claims 19, 20, 42, 43, 63, and 64, which fall therewith.

VI. ORDER
In summary, the rejections of claims 1-66 under § 103(a) are affirmed.

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

AFFIRMED

pgc

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