Ex Parte Green

Board of Patent Appeals and Interferences

Aug 28, 2006

09176077 (B.P.A.I. Aug. 28, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROBIN A. GREEN
__________

Appeal No. 2006-1016
Application No. 09/176,077
__________

ON BRIEF
__________

Before KRASS, RUGGIERO, and MacDONALD, Administrative Patent Judges.

KRASS, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal from the final rejection of claims 1-8, 10, 11, 13-20,
33-38, and 40. Claims 21-32, 39, and 41 have been indicated by the examiner as being
directed to allowable subject matter and are not before us on appeal.
The invention pertains to interactions of users through a web browser, wherein
comments are permitted to be added to documents and displayed dynamically.
Representative independent claim 1 is reproduced as follows:

1. A file review system for storing and managing a set of comments associated
with a source file, comprising

means for requesting the source file using unmodified standard messaging
protocols,
Appeal No. 2006-1016 Page 2
Application No. 09/176,077

means for accepting data from the source file and storing a representation of the
source file as a markup file,

means for creating a comment file containing data representing the set of
comments associated with the source file,

means for accepting new comments for inclusion in the set of comments
associated with the source file and for updating the comment file to correspond to the
complete set of comments,

means for generating a hypertext document from the markup file and from the
comment file, the hypertext document corresponding to the source file and including
portions corresponding to one or more of the set of comments associated with the
source file,

means for communicating the hypertext document to a user for display.

The examiner relies on the following references:

Gramlich 5,826,025 Oct. 20, 1998

Tran 6,054,990 Apr. 25, 2000
(filed July 05, 1996)

Day et al. (Day) 6,243,722 Jun. 05, 2001
(filed Nov. 24, 1997)

Claims 1-8, 10, 11, 13-20, 33-38, and 40 stand rejected under 35 U.S.C. § 103.
As evidence of obviousness, the examiner offers Gramlich and Day with regard to
claims 1, 10, 16-20, 33, and 40, adding Tran with regard to claims 2-8, 11, 13-15, and
34-38.
Reference is made to the briefs and answer for the respective positions of
appellant and the examiner.
OPINION
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See In re Fine,

Appeal No. 2006-1016 Page 3
Application No. 09/176,077

837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth in Graham v, John
Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). The examiner must articulate
reasons for the examiner’s decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430,
1434 (Fed. Cir. 2002). In particular, the examiner must show that there is a teaching,
motivation, or suggestion of a motivation to combine references relied on as evidence of
obviousness. Id. at 1343. The examiner cannot simply reach conclusions based on the
examiner’s own understanding or experience – or on his or her assessment of what
would be basic knowledge or common sense. Rather, the examiner must point to some
concrete evidence in the record in support of these findings. In re Zurko, 258 F.3d
1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). Thus the examiner must not only
assure that the requisite findings are made, based on evidence of record, but must also
explain the reasoning by which the findings are deemed to support the examiner’s
conclusion. However, a suggestion, teaching, or motivation to combine the relevant
prior art teachings does not have to be found explicitly in the prior art, as the teaching,
motivation, or suggestion may be implicit from the prior art as a whole, rather than
expressly stated in the references. The test for an implicit showing is what the
combined teachings, knowledge of one of ordinary skill in the art, and the nature of the
problem to be solved as a whole would have suggested to those of ordinary skill in the
art. In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) citing In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313 (Fed. Cir. 2000). See also In re Thrift,
298 F.3d 1357, 1363, 63 USPQ2d 2002, 2008 (Fed. Cir. 2002). These showings by the

Appeal No. 2006-1016 Page 4
Application No. 09/176,077

examiner are an essential part of complying with the burden of presenting a prima facie
case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts to the applicant to
overcome the prima facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the relative persuasiveness of
the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1040, 228 USPQ 685, 687 (Fed.
Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984);
and In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 146-147 (CCPA 1976). Only
those arguments actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make in the brief have
not been considered and are deemed to be waived [see 37 CFR § 41.37(c)(1)(vii)
(2004)].
With regard to independent claim 1, the examiner asserts that Gramlich teaches
storing and managing a set of annotation overlays (Abstract, column 2, line 65 to
column 3, line 2, and 9-13) which the examiner compares to the claimed preamble of
“storing and managing a set of comments associated with a source file.”
The examiner cites Figure 1, column 2, line 65 to column 3, line 2, and column 4,
lines 42-46 and 61-64, of Gramlich, teaching a Web browser used to request source
files via a source message. The examiner notes that while the original document is
requested using unmodified protocols (HTTP) in Gramlich, Gramlich does not
specifically teach that the requests to the overlay sources (Figure 1, item 116) are sent
using unmodified protocols. The examiner turns to Day, in the abstract; Figures 6 and

Appeal No. 2006-1016 Page 5
Application No. 09/176,077

7; column 4, lines 18-25; column 5, lines 45-49; column 7, lines 22-38; and column 8,
lines 53-60, for a teaching of a comment review system whereby comments are entered
and stored separately from the original document, the comments sent utilizing a typical
browser using typical protocols. The examiner equates this to the claimed “means for
requesting the source file using unmodified standard messaging protocols.”
The examiner concludes that it would have been obvious to apply Day’s
unmodified browser’s use of sending comments, to Gramlich’s sending of source data
to the annotation proxy (see Gramlich’s Figure 1, items 114 and 116), “providing
Gramlich the benefit of capitalizing on the ubiquity of (typical) web browsers (see Day
column 7 lines 27-28)” (answer-page 4).
Moreover, the examiner indicates that Gramlich does not specifically teach a “file
review system,” as claimed, but contends that since Gramlich suggests the importance
of Web users to be able to comment on the content of a Web document, as well as view
others’ comments, providing the equivalent of the claimed “file review system,” it would
have been obvious “to interpret Gramlich’s system to be used for document review
purposes, providing the benefit of critical review of published documents” (answer-
page 4).
The examiner also contends that Gramlich teaches the claimed “means for
accepting data from the source file…source file as a markup file,” by retrieving source
documents in a Web browser (indicative of an HTML file) at column 3, lines 65-67,
column 4, lines 43-50, and in the abstract.

Appeal No. 2006-1016 Page 6
Application No. 09/176,077

The claimed “means for creating a comment file containing data…comments
associated with the source file” is said to be taught by Gramlich as annotation overlay
groups encapsulating annotation overlays associated with a source document file, at
column 3, lines 9-13 and column 11, lines 54-61.
The claimed “means for accepting new comments for inclusion . . . to correspond
to the complete set of comments” is said to be taught by Gramlich as input and
acceptance of new annotation overlays directly to one or more overlay groups and as a
grouped set of overlays associated with a document, wherein overlay groups are
updated with new contributions accordingly, identifying column 7, lines 35-45 and
column 8, lines 40-50, of Gramlich.
The examiner identifies Gramlich’s teaching of a source document in a Web
browser, indicative of an HTML file, (abstract; column 3, lines 65-67; and column 4,
lines 43-50), as well as associated annotation overlays, with the overlays also written in
HTML (column 8, lines 35-40), and Gramlich’s teaching of an annotation overlay proxy
(AOP), which dynamically combines a source document with associated annotation
overlays, allowing the resulting merged document to be shown via a browser by directly
displaying the inserted overlay text at the insertion point within the source document
(column 11, lines 25-29; column 12, lines 34-36; column 13, lines 8-16; and Figure 5),
as a disclosure of the claimed, “means for generating a hypertext document from the
markup file…the set of comments associated with the source file.”

Appeal No. 2006-1016 Page 7
Application No. 09/176,077

Finally, the examiner asserts that Gramlich’s teaching of a display of a merged
hypertext document via a browser (abstract; column 3, lines 17-22; and column 4, lines
43-47) is a disclosure of the claimed, “means for communicating the hypertext
document to a browser for display.”
Appellant argues that the examiner has not provided sufficient motivation to
combine Gramlich and Day (principal brief, pages 5-7). Also, while appellant argues
specific limitations of dependent claims 16, 17, and 19 (principal brief, pages 8-10), no
argument is made that the combination of Gramlich and Day lacks any limitation of
claims 1, 10, 18, 33, and 40. Accordingly, if we find that there was sufficient motivation
for making the proposed combination of Gramlich and Day, then we would sustain the
rejection of these claims since appellant offers no further argument as to them.
We REVERSE.
We have reviewed the various portions of Day cited by the examiner (the
abstract; Figures 6 and 7; column 4, lines 18-25; column 5, lines 45-49; column 7, lines
22-38; and column 8, lines 53-60) for the proposition that Day discloses a means for
requesting a source file using “unmodified standard messaging protocols,” as claimed,
but we find nothing therein convincing us of a disclosure of this limitation.
While appellant does not specifically deny the disclosure of such a limitation by
Day, appellant does assert that the examiner has provided no basis in fact to support
the assertion that by combining the rationale of Day, i.e., capitalizing on the ubiquity of
web browsers within development organizations, with the disclosure of Gramlich, one

Appeal No. 2006-1016 Page 8
Application No. 09/176,077

would cause Gramlich’s browsers to have a source call be considered an “unmodified
standard messaging protocol,” as claimed. We agree.
If there is some reason, unknown to us, to have combined the Day rationale of
capitalizing on the ubiquity of web browsers within development organizations with
Gramlich in such a manner to arrive at the instant claimed subject matter, including a
“means for requesting the source file using unmodified standard messaging protocols,”
the examiner has not convincingly set forth such a reason.
Accordingly, we find no prima facie case of obviousness established by the
examiner and we will not sustain the rejection of claims 1-8, 10, 11, 13-20, 33-38, and
40 under 35 U.S.C. § 103. The reference to Tran, employed in combination with
Gramlich and Day in the rejection of claims 2-8, 11, 13-15, and 34-38 does not provide
for the deficiencies of the primary references.
The examiner’s decision is reversed.
REVERSED

Errol A. Krass )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Joseph F. Ruggiero )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Allen R. MacDonald )
Administrative Patent Judge )

Appeal No. 2006-1016 Page 9
Application No. 09/176,077

IBM Corporation
3039 Cornwallis Road
Dept. T81/B503, P.O. Box 12195
Research Triangle Park, NC 27709

dem