Ex Parte Eves et al

Patent Trial and Appeal Board

Sep 19, 2012

10515079 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID A. EVES and RICHARD S. COLE
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Appeal 2010-000297
Application 10/515,079
Technology Center 2100
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Before CAROLYN D. THOMAS, CARL W. WHITEHEAD, JR., and
ANDREW J. DILLON, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000297
Application 10/515,079

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 (2012) from a final rejection
of claims 1-10. Appeal Brief 3. We have jurisdiction under 35 U.S.C.
§ 6(b) (2012).
We affirm.

Introduction
The invention is directed to a method for generating a markup
language document. Appeal Brief 3.

Illustrative Claim
1. A method for generating a markup language document,
comprising:
accessing a pool of active markup language fragments;
processing said fragments using at least one predetermined factor;
and
generating a markup language document accordingly.

Rejections on Appeal
Claims 1-10 stand rejected under 35 U.S.C. §102(b) as being
anticipated by Nazem (U.S. Patent Number 5,983,227, issued November 9,
1999). Answer 3-4.

Claims 1, 3 and 8-10 stand rejected under 35 U.S.C. §102(b) as being
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anticipated by Lafer (U.S. Patent Number 6,192,382 B1, issued February 20,
2001). Answer 4-5.

Claim 2 stands rejected under 35 U.S.C. §103(a) as being unpatentable
over Lafer and Nazem. Answer 5-6.

Issue on Appeal
Does Nazem disclose a method for generating a markup language
document as recited in claim 1?

ANALYSIS
We disagree with Appellants’ assertions regarding the Examiner’s
rejection of the claims on appeal. We adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer (Answer 3-13) in response to arguments made in Appellants’
Appeal Brief. We concur with the conclusion reached by the Examiner. We
highlight and address certain findings and arguments below.

Anticipation rejection based upon Nazem
Appellants disagree with the Examiner’s interpretation of the live data
in Nazem being equivalent to Appellants’ active markup language fragments
as recited in claim 1. Appeal Brief 5 (quoting Answer 6). We do not find
Appellants’ argument to be persuasive. Examiner has taken the position that
Appellants’ “accessing a pool of active markup language fragments”
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limitation read upon Nazem’s “live data to fill any user template.” Answer
3. We agree with the Examiner’s findings because it is evident that Nazem
employs the use of markup language that is syntactically distinguishable
from the text of the user page generated by using a global template; in this
circumstance, the text is “live data.” See Nazem Figures 3-5; see also
Answer 6-7.
Appellants further argue that “[o]ne skilled in the art clearly
understands what is being referred to by using ‘markup language’” and refer
to an example from their Specification (Page 4, lines 22-33) to show “an
exemplary description of what fragments are.” Appeal Brief 6. The
Examiner finds that limitations from the Specification are not read into the
claims. Answer 7 (citations omitted). We agree with the Examiner’s
findings. Although giving claims their broadest reasonable interpretation
must take into account any definitions given in the Specification (In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)), it is improper to read into the
claims limitations from examples given in the Specification. In re Zletz, 893
F.2d 319, 321-22 (Fed. Cir. 1989). See also Phillips v. AWH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005)(“[A]lthough the specification often
describes very specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments. . . . In particular,
we have expressly rejected the contention that if a patent describes only a
single embodiment, the claims of the patent must be construed as being
limited to that embodiment”) (citations omitted).
We sustain the Examiner’s rejection of claim 1 as well as independent
claim 8, which was not argued separately, for the reasons stated above. We
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also sustain the Examiner’s rejection of dependent claims 2-7, 9 and 10
which were also not argued separately.
We affirm the Examiner’s rejection of all of the pending claims 1-10
under 35 U.S.C. § 102 and therefore we need not address the other rejections
of the very same claims under the various other rejections.

DECISION
The rejections of claims 1-10 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED

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