Ex Parte Hanaoka et al

Board of Patent Appeals and Interferences

Feb 27, 2008

09748843 (B.P.A.I. Feb. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte TAIRA HANAOKA and AKIRA SAKAI 8
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10
Appeal 2007-2645 11
Application 09/748,843 12
Technology Center 3600 13
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Decided: February 27, 2008 16
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Before HUBERT C. LORIN, ANTON W. FETTING, and 19
JOSEPH A. FISCHETTI, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
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23
DECISION ON APPEAL24
25
STATEMENT OF CASE 26
Taira Hanaoka and Akira Sakai (Appellants) seek review under 27
35 U.S.C. § 134 of a final rejection of claims 1 and 3-14, the only claims 28
pending in the application on appeal. 29
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 30
(2002). 31
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We AFFIRM. 1
The Appellants invented a portable information terminal apparatus 2
which reads a URL written on a printed matter, obtains web contents 3
corresponding to the read URL from a web server via a communication 4
network such as the internet, and displays the web contents (Specification 5
1:5-10). 6
An understanding of the invention can be derived from a reading of 7
exemplary claim 1, which is reproduced below [bracketed matter and some 8
paragraphing added]. 9
1. A portable information terminal apparatus comprising: 10
[1] a display element; 11
[2] a communication element; 12
[3] a reading element which reads access destination 13
information indicated on a printed matter, 14
said reading element including 15
a scanner which reads an image on said printed 16
matter and 17
an extraction element which extracts said access 18
destination information included in said image; 19
[4] a memory which stores said image; 20
[5] a control element which 21
connects to an access destination corresponding to said 22
access destination information through said 23
communication element, 24
receives contents from said access destination, and 25
executes a browser for displaying said received contents 26
on said display element, 27
[6] wherein said image stored in said memory 28
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[a] is displayed on said display element 1
[b] as a bookmark image 2
[c] associated with said access destination information. 3
4
This appeal arises from the Examiner’s Final Rejection, mailed August 5
23, 2005. The Appellants filed an Appeal Brief in support of the appeal on 6
August 16, 2006. An Examiner’s Answer to the Appeal Brief was mailed on 7
December 1, 2006. A Reply Brief was filed on January 23, 2007. The 8
Appellants presented oral arguments at a hearing on January 20, 2008. 9
PRIOR ART 10
The Examiner relies upon the following prior art: 11
Schena US 6,546,418 B2 Apr. 8, 2003
Dougherty US 6,587,859 B2 Jul. 1, 2003
REJECTION 12
Claims 1 and 3-14 stand rejected under 35 U.S.C. § 103(a) as 13
unpatentable over Schena and Dougherty. 14
ISSUE 15
The issue pertinent to this appeal is whether the Appellants have 16
sustained their burden of showing that the Examiner erred in rejecting claims 17
1 and 3-14 under 35 U.S.C. § 103(a) as unpatentable over Schena and 18
Dougherty. 19
The pertinent issue turns on whether the art applied describe or suggest 20
storing a bookmark image. 21
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Application 09/748,843

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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to Claim Construction 4
01. The disclosure contains no lexicographic definition of 5
“bookmark.” 6
02. The ordinary and customary meaning within the context of a 7
computer environment of “bookmark” is a record of the address of 8
a file enabling quick access by a user.1 9
Schena 10
03. Schena is directed to managing a domain name service 11
involving scanning a machine-readable code containing a link 12
information corresponding to the provider information from an 13
object and storing the machine-readable code in a memory. The 14
link information is then extracted from the machine readable code 15
in the memory. User input corresponding to the provider 16
information is also obtained and stored in the memory. The link 17
information and the user input information are then sent to a portal 18
server which selects a multimedia information sequence 19
corresponding to the link information and the user input 20
information. The multimedia information sequence is then sent to 21
the receiver (Schena 2:25-46). 22

1 Online Compact Oxford English Dictionary
http://www.askoxford.com/concise_oed/bookmark.
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04. Schena portrays an embodiment in which the scanner and 1
reception equipment are integrated. This embodiment includes a 2
display, communications equipment, a scanner that reads printed 3
information, memory, and control over the scanning, and access to 4
a destination designated by the contents of information in the 5
scanned image (Schena Fig. 3). 6
05. Schena’s scanner may scan and process, scan and hold, or scan 7
and display. The scanner may also allow copying of the code for 8
backup or review and edit (Schena 9:56-59). 9
Dougherty 10
06. Dougherty is directed to printable interfaces including encoded 11
images, referred to as linkmarks and multicons, provide both 12
machine and human readable information. The human readable 13
information indicates to the user the nature of the machine 14
readable information, and the machine information enables a user 15
to link to and control computer system (Dougherty 1:19-27). If the 16
machine readable information is a web URL, the system navigates 17
to that URL (Dougherty 2:66 – 3-8). 18
07. Encoded within Dougherty’s linkmark is information that the 19
computer system can use to open, access or implement a computer 20
implemented process such as a computer application, a web page, 21
or a web site. In certain embodiments, information encoded on the 22
linkmark may include a uniform resource locator (URL) that 23
directs to a particular web page or web site located on the Internet. 24
In other embodiments, information encoded on the Linkmark may 25
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include a particular document available upon the computer 1
system, the computer implemented process in this case being the 2
application which must execute in order to access the particular 3
document. Certain linkmarks are multicon linkmarks which, in 4
addition to encoded machine readable information, provide human 5
readable information indicating to a viewer the nature, function, or 6
capability of the encoded machine readable information 7
(Dougherty 4:55 – 5:4). 8
Facts Related To The Level Of Skill In The Art 9
08. Neither the Examiner nor the Appellants has addressed the level 10
of ordinary skill in the pertinent arts of tracking items and data 11
formatting. We will therefore consider the cited prior art as 12
representative of the level of ordinary skill in the art. See Okajima 13
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he 14
absence of specific findings on the level of skill in the art does not 15
give rise to reversible error ‘where the prior art itself reflects an 16
appropriate level and a need for testimony is not shown’”) 17
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 18
F.2d 158, 163 (Fed. Cir. 1985). 19
Facts Related To Secondary Considerations 20
09. There is no evidence on record of secondary considerations of 21
non-obviousness for our consideration. 22
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PRINCIPLES OF LAW 1
Claim Construction 2
During examination of a patent application, pending claims are 3
given their broadest reasonable construction consistent with the 4
specification. In re Prater , 415 F.2d 1393, 1404-05 (CCPA 1969); 5
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, (Fed. Cir. 6
2004). 7
Limitations appearing in the specification but not recited in the claim are 8
not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 9
1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 10
specification” without importing limitations from the specification into the 11
claims unnecessarily) 12
Although a patent applicant is entitled to be his or her own lexicographer 13
of patent claim terms, in ex parte prosecution it must be within limits. In re 14
Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing 15
such definitions in the Specification with sufficient clarity to provide a 16
person of ordinary skill in the art with clear and precise notice of the 17
meaning that is to be construed. See also In re Paulsen, 30 F.3d 1475, 1480 18
(Fed. Cir. 1994) (although an inventor is free to define the specific terms 19
used to describe the invention, this must be done with reasonable clarity, 20
deliberateness, and precision; where an inventor chooses to give terms 21
uncommon meanings, the inventor must set out any uncommon definition in 22
some manner within the patent disclosure so as to give one of ordinary skill 23
in the art notice of the change). 24
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Obviousness 1
A claimed invention is unpatentable if the differences between it and 2
the prior art are “such that the subject matter as a whole would have been 3
obvious at the time the invention was made to a person having ordinary skill 4
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 5
1727 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 6
In Graham, the Court held that that the obviousness analysis is 7
bottomed on several basic factual inquiries: “[(1)] the scope and content of 8
the prior art are to be determined; [(2)] differences between the prior art and 9
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 10
in the pertinent art resolved.” 383 U.S. at 17. See also KSR Int’l v. Teleflex 11
Inc., 127 S.Ct. at 1734. “The combination of familiar elements according to 12
known methods is likely to be obvious when it does no more than yield 13
predictable results.” KSR, at 1739. 14
“When a work is available in one field of endeavor, design incentives 15
and other market forces can prompt variations of it, either in the same field 16
or in a different one. If a person of ordinary skill in the art can implement a 17
predictable variation, § 103 likely bars its patentability.” Id. at 1740. 18
“For the same reason, if a technique has been used to improve one 19
device, and a person of ordinary skill in the art would recognize that it would 20
improve similar devices in the same way, using the technique is obvious 21
unless its actual application is beyond his or her skill.” Id. 22
“Under the correct analysis, any need or problem known in the field 23
of endeavor at the time of invention and addressed by the patent can provide 24
a reason for combining the elements in the manner claimed.” Id. at 1742. 25
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ANALYSIS 1
Claims 1 and 3-14 rejected under 35 U.S.C. § 103(a) as unpatentable over 2
Schena and Dougherty. 3
The Appellants argue claims 1 and 6 as a group. 4
Accordingly, we select claim 1 as representative of the group. 5
37 C.F.R. § 41.37(c(1)(vii) (2006). 6
The Examiner found that both Schena and Dougherty describe scanning 7
an image that contains link information and extracting the link information. 8
The Examiner found that Schena describes the scanner explicitly and that the 9
scanner and receiver could be combined in a single unit. The Examiner 10
found that Dougherty described the scanned images as containing both links 11
such as internet URL’s and human readable information. The Examiner 12
implicitly found that one of ordinary skill would have understood the 13
benefits of extracting such human readable information in Dougherty and 14
applied that feature, along with storage, to Schena for the purpose of 15
allowing a user to revisit web contact as taught by Schena (Answer 4-5). 16
The Appellants contend that Schena fails to describe adding human 17
readable information to its link information (Br. 5:Bottom ¶) and that 18
Dougherty fails to describe how its multicons and linkmarks could be used 19
to create bookmark images (Br. 6:Top ¶). The Appellants further argue that 20
merely collecting links does not create bookmarks, but that images, titles or 21
descriptive text would have to be added (Br. 6:Bottom ¶). The Appellants 22
conclude that it would not have been obvious to create a bookmark image 23
from the combined teachings of Schena and Dougherty (Br. 7:Top ¶). 24
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We disagree. Schena is directed toward a system that scans printed link 1
information, and extracts and accesses that link (FF 03). As such, Schena 2
describes an embodiment containing elements [1]-[5] of claim 1 (FF 04). 3
Schena also describes displaying a stored image of the scanned image (FF 4
05). 5
While we agree with the Appellants that Schena describes entering 6
human readable information by a user rather than scanning such in with an 7
image (FF 03), we find that Dougherty describes scanning an image that 8
contains both machine readable link information and human readable 9
information (FF 06). The Appellant is simply attacking the references 10
separately, even though the rejection is based on the combined teachings of 11
the references. Nonobviousness cannot be established by attacking the 12
references individually when the rejection is predicated upon a combination 13
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 14
(Fed. Cir. 1986). 15
Since Schena and Dougherty describe elements [1]-[5], and describe 16
storing an image containing link information, the issue is reduced to whether 17
a bookmark image would have been a predictable variation of the image so 18
stored. The combination of familiar elements according to known methods 19
is likely to be obvious when it does no more than yield predictable results. 20
KSR, 127 S. Ct. at 1739. We first must construe the limitation of a 21
bookmark image. The Specification contains no lexicographic information, 22
but the usual and customary definition of a bookmark within a computer 23
context is that of a record of the address of a file enabling quick access by a 24
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user (FF 01 & 02). We therefore construe a bookmark image as an image 1
that contains an address of a file enabling quick access by a user. 2
Both Schena and Dougherty describe scanning such images (FF 03 & 3
07). Schena describes storing such an image (FF 05). Although the 4
Appellants argue that a bookmark must also contain human readable 5
information, this is simply not a requirement of a bookmark, and the 6
Appellants have pointed to no evidence otherwise. But even were human 7
readable information required, this is clearly included with Dougherty’s 8
multicon linkmark (FF06). Thus, the Appellants have not sustained their 9
burden of showing that the Examiner erred in rejecting claims 1 and 6. 10
The Appellants argue that the dependent claims 3-5 and 7-14 are 11
patentable for the same reason as claim 1. Thus, the Appellants have failed 12
to show the Examiner erred in the rejection of these dependent claims for the 13
same reasons as with claim 1, supra. 14
The Appellants have not sustained their burden of showing that the 15
Examiner erred in rejecting claims 1 and 3-14 under 35 U.S.C. § 103(a) as 16
unpatentable over Schena and Dougherty. 17
CONCLUSIONS OF LAW 18
The Appellants have not sustained their burden of showing that the 19
Examiner erred in rejecting claims 1 and 3-14 under 35 U.S.C. § 103(a) as 20
unpatentable over the prior art. 21
On this record, the Appellants are not entitled to a patent containing 22
claims 1 and 3-14. 23
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DECISION 1
To summarize, our decision is as follows: 2
• The rejection of claims 1 and 3-14 under 35 U.S.C. § 103(a) as 3
unpatentable over Schena and Dougherty is sustained. 4
No time period for taking any subsequent action in connection with this 5
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 6
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AFFIRMED 8
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SCULLY SCOTT MURPHY & PRESSER, PC 13
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