Ex Parte Giannetti

Board of Patent Appeals and Interferences

Jul 29, 2011

10656776 (B.P.A.I. Jul. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FABIO GIANNETTI
____________

Appeal 2009-010424
Application 10/656,776
Technology Center 2100
____________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
DENISE M. POTHIER, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner‟s
rejection of claims 1-14 and 18. Claims 15-17 have been canceled. Br. 2.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellant‟s invention relates to a technique for authoring content,
such as a binding element, that does not itself contain any content or style
but rather has directors to style and content. In this manner, the content and
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style are separated from the layout document and are referred to only
indirectly by the layout document. See generally Spec. 1, 3. Claim 1 is
reproduced below with the key disputed limitations emphasized:
1. A method of authoring content to be served by a server
comprising:
authoring on a computing device a layout document which defines
at least one area of a document which includes the content to be
published;
authoring on a computing device at least one binding element
which defines the identity and location of at least a portion of content
and, using xpointer syntax, at least one style description file which
defines a style to be applied to a selected portion of content;
in which the step of authoring the layout document includes
allocating to the at least one defined area a director to at least one
binding element such that when processed the published document
includes in the defined area the content as directed by the binding
element in the style as directed by the binding element.

The Examiner relies on the following as evidence of unpatentability:
Didier Martin, Didier’s lab report 1-5
1
(2000), available at
http://lists.xml.org/archives/xml-dev/200012/msg00134.html (“Didier”).

Steve DeRose et al., XML Pointer Language (XPointer) Version 1.0, W3C
Last Call Working Draft 8 January 2001 1-25
2
(2001), available at
http://www.w3.org/TR/2001/WD-xptr-20010108 (“DeRose”).

David Hyatt, XBL – XML Binding Language, W3C Note 23 February 2001
1-35
3
(2001), available at http://www.w3.org/TR/2001/NOTE-xbl-
20010223/ (“Hyatt”).

1
Five printed pages of this reference were provided, and these page numbers
correspond sequentially to the pages provided.
2
Twenty-five printed pages of this reference were provided, and these page
numbers correspond sequentially to the pages provided.
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THE REJECTIONS
1. The Examiner rejected claim 18 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Ans. 3-4.
2. The Examiner rejected claims 1-14 and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Hyatt, DeRose, and Didier. Ans. 4-17.
4

THE NON-STATUTORY SUBJECT MATTER REJECTION
Regarding independent claim 18, the Examiner finds that the recited
“layout document processor circuit” is described as software in the
Specification and fails to recite any hardware, such as a central processing
unit (CPU) in the claimed system. Ans. 3-4, 18-19. For this reason, the
Examiner concludes claim 18 is directed to software exclusively and is
non-statutory. Id.
Appellant argues a circuit is necessary to execute software and directs
our attention to the figures in the present application showing hardware,
such as a computer. Br. 5-6.

ISSUE
Under § 101, has the Examiner erred in rejecting claim 18 by
concluding the recited system is directed to non-statutory subject matter?

3
Thirty-five printed pages of this reference were provided, and these page
numbers correspond sequentially to the pages provided.
4
Throughout this opinion, we refer to the Appeal Brief filed November 7,
2008 and the Examiner‟s Answer mailed February 6, 2009.
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FINDINGS OF FACT (FF)
1. Appellant explains that a computer can act like a server and states
that the processing apparatus or server 100 holds data to be distributed to
devices. The apparatus or server 100 has a display 104, a keyboard 108, a
mouse 110, and a processing circuit 106. Spec. 7:25-26; 8:10-18; Fig. 1.
2. Appellant‟s processing circuit 106 includes a processing unit 112
(e.g., an INTEL PENTIUM series processor), a hard drive 114, a video
driver 116, memory 118 (RAM and ROM), and an I/O subsystem 120.
Spec. 8:18-24; Fig. 1.
3. Appellant states the web content is held on the server 100.
Spec. 9:11-12.

PRINCIPLES OF LAW
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101.

ANALYSIS
Based on the record before us, we find error in the Examiner‟s
rejection of claim 18 as being directed to non-statutory subject matter.
Appellant describes a computer that can be a processing apparatus or server
100. See FF 1. This apparatus 100 includes a processing circuit 106 having
a processor, a hard drive, and memory. See FF 2. These components are
hardware that collectively constitute the processing circuit. See id.
Because the Examiner provides no specific citation to the disclosure
where the recited “layout document processor circuit” is described as
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software (Ans. 3-4), we presume the Examiner is alleging that the
Specification does not describe a specific layout document processor circuit
as hardware, but only discusses how the layout document is generated (e.g.,
software). We agree that Appellant does not state explicitly that the
processing apparatus 100 produces the layout document. See FF 1-2.
However, the Specification describes the apparatus 100 as a computer used
to process and distribute data, such as the layout document data, to devices.
See FF 1. Also, the apparatus 100 holds web content (e.g., layout document
data). See FF 3. Thus, the computer 100 and its processing circuit 106 are
used to produce and hold information for publishing content, including
layout document data. See FF 2-3. We therefore find the “layout document
processing circuit” that defines an area in a document where content is to be
published includes the hardware described in the disclosure. See FF 2.
Claim 18 therefore falls within a statutory category (e.g., a machine or
manufacture) under § 101.
For the foregoing reasons, Appellant has persuaded us of error in the
non-statutory subject matter rejection of independent claim 18.

THE OBVIOUSNESS REJECTION OVER HYATT, DEROSE, AND DIDIER
Regarding representative independent claim 1, the Examiner finds that
Hyatt discloses (1) bindings to style information using a style sheet, and (2)
binding elements to elements that include the identity and location of a
content‟s portion by referencing a pointer. Ans. 5. The Examiner further
states that the “#” symbol in Hyatt suggests and is a pointer to other binding
elements. Ans. 22-23. The Examiner cites to DeRose to teach using an
Xpointer for referencing internal structures of a document (Ans. 5-6) and to
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Didier to teach specifically using an Xpointer to stylesheet information (Ans.
6, 22).
Appellant argues that DeRose fails to teach the recited director to the
binding element. Br. 6-8. Appellant asserts that Examiner‟s discussion of
DeRose‟s Xpointer as a director does not make sense and is not
commensurate in scope with claim 1. Br. 7-8.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Hyatt, DeRose, and Didier would have taught or suggested collectively
authoring a layout document by allocating to a defined area a director to at
least one binding element?

ADDITIONAL FINDINGS OF FACT
4. Appellant states a director “directs a browser processing the XML
portion to a binding element.” Spec. 11:2-3
5. Hyatt teaches an XML binding language (XBL) that is a markup
language for describing bindings that can be attached to element using
cascading stylesheet (CSS) in other documents. Hyatt 1.
6. Hyatt describes XBL elements, including a binding element that
describes a single XBL binding which dynamically binds new information to
XML elements in other documents. Each binding has three optional
components: (1) Content; (2) Methods and Properties; and (3) Behavior.
Hyatt 4.
7. The binding element also includes: (1) a required id attribute
that is a document-unique identifier and uniquely identifies a binding and (2)
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an extends attribute used to specify the URL that specifies a particular
binding document and a # notation must be used to point to a specific
binding id within a binding document. Hyatt 4.
8. Hyatt‟s content element contains child nodes and has an id
attribute as a document-unique identifier. The subtree specified by the
content element is referred to as the anonymous content template. The
nodes are hidden from their parent and exist outside the normal document
and are referred to as anonymous content. When a binding is attached and if
certain conditions specified by the template are met, the content element‟s
child nodes are inserted into the bound document under the bound element.
Hyatt 4-5, 20.
9. Hyatt‟s children element is used inside anonymous content to
specify insertion points for explicit content that might already exist
underneath the bound element or for anonymous content generated by the
base binding. Hyatt 5.
10. Hyatt teaches a stylesheet element that is used to specify a
stylesheet that can be applied to anonymous content generated by bindings
and to explicit children in the documents that use the binding. Hyatt 13.
11. Hyatt states that bindings can be attached to elements through
CSS using the binding property. Hyatt 14.
12. DeRose teaches that an Xpointer is used to address the internal
structures of XML documents and allows for the choice of internal parts
based on various properties. DeRose 3.
13. Didier teaches a URL used to transform and return a fragment or
a returned element (e.g., element) with a required format using the
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following URL (e.g.,
/folder1/folder2/mydoc.xml#xpointer(“/detail”)?style=xhtml.xsl). Didier 3.

ANALYSIS
Based on the record before us, we find no error in the Examiner‟s
rejection of claim 1 which recites, in pertinent part, allocating to the least
one defined area a director to at least one binding element. We admit the
Examiner‟s position related to which cited reference and which component
in the references teaches the recited director has wavered. The Examiner
states, at one point, that DeRose teaches the director. See Ans. 6 (“[DeRose]
also teaches its application using a director . . . .”) Particularly, the
Examiner finds that the code “href = „#Xpointer . . .‟” teaches a director that
is defined as an attribute format. See id. On the other hand, the Examiner
states Hyatt teaches a # notation that suggests a pointer. See Ans. 5. And
the Examiner also explains that a director is a pointer, and that Hyatt
discloses a pointer by using the # notation. See Ans. 23.
Despite this confusion, we agree that the recited director can be a
pointer. Appellant has not specially defined a director (see generally
Specification), and consistent with the Specification (FF 4), a director can
direct or point a browser to a binding element as recited. Hyatt discusses a
binding element (e.g., a single XBL binding) that has optional components,
including an extends attribute. See FF 7. This attribute has a # notation
used to point to the specific binding id within a binding document or is “a
director” that will point to a specific binding id having a document-unique
identifier. See id. Thus, Hyatt also teaches a pointer as a director to a
binding (e.g., a binding element) through its binding id.
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Moreover, claim 1 requires “a director to at least one binding
element” and not “a director to the at least one binding element” which
defines the identity and location of at least a portion of the content.
Nonetheless, Hyatt discloses a binding element includes an id attribute and
an optional content component which identifies at least a content portion.
See FF 6-8. Also, the content component can include child nodes inserted
into the bound document only when conditions are met and thus defines the
identity of the content portion hidden from the parent and existing outside
the normal document through an anonymous content template See FF 8.
These children elements are used inside the anonymous content specifying
an insert points for explicit content or a location of the content portion. See
FF 9. We therefore find that the director that points to a specific binding id,
which identifies a binding, also teaches and suggests a pointer to a binding
element that defines the identity and location of a content portion as recited.
Thus, despite Appellant‟s contentions (Br. 6), Hyatt teaches and suggests a
pointer to a binding element that possess the recited characteristics and thus
includes two levels of binders (e.g., # notation is a pointer that binds or is a
binder to another binding element).
Appellant‟s argument focus on DeRose and how DeRose does not
teach a director. See Br. 6-8. However, as explained above and by the
Examiner (Ans. 23), Hyatt also teaches and suggests a director to a binding
element as recited. See FF 6-9. Thus, while we agree that the Examiner‟s
discussion of DeRose using an Xpointer to teach a director (see Ans. 6) is
not commensurate in scope with claim 1, Appellant‟s attack on DeRose
alone (Br. 6-8) does not demonstrate nonobviousness of the recited
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Xpointer. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Additionally, the Examiner relies on DeRose and Didier in
combination with Hyatt‟s discussion of style sheets or the stylesheet
elements (see FF 5, 10) to teach using Xpointer syntax to author a style
description file. See Ans. 5, 20, 22. That is, Hyatt teaches a stylesheet
element that can be applied to the anonymous content generated by the
bindings. See FF 10. Hyatt explains that the bindings can be attached to
elements using a CSS but does not describe an Xpointer. See FF 11. On the
other hand, DeRose teaches that an Xpointer can be used to address internal
structures of XML documents, such as Hyatt‟s stylesheet element used to
specify a stylesheet applied to anonymous content generated by bindings
(see FF 5, 10), based on various properties. See FF 12. Moreover, Didier
specifically teaches using Xpointer syntax to author a style description file
that defines a style to be applied to content portion. See FF 13. The
references therefore collectively teach using an Xpointer syntax to author a
style description file that defines a style to be applied to a selected content
portion as recited.
Notably, claim 11 is broader in scope than claims 1, 14 and 18. Claim
11 does not recite using an Xpointer syntax, but rather a data structure
comprising at least one style description which defines a style to be applied
to a selected content portion. Claim 11 also does not allocate to an area “a
director to at least a binding element,” but rather a data structure that has a
binding element in the layout document allocated to an area “as directed by a
binding element.” Thus, contrary to Appellant‟s assertions (Br. 6), claim 11
does not recite two levels of direction.
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For the foregoing reasons, Appellant has not persuaded us of error in
the obviousness rejection of: (1) independent claims 1 and 11; (2)
independent claims 14 and 18 which recite limitations commensurate with
claim 1 and are not separately argued (Br. 6-8); and (3) claims 2-10, 12, and
13 not separately argued with particularity (id.).

CONCLUSION
The Examiner did not err in rejecting claims 1-14 and 18 under § 103,
but erred in rejecting claim 18 under § 101.

DECISION
The Examiner‟s decision rejecting claims 1-14 and 18 is 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).

AFFIRMED

ELD