Ex Parte Hayes et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201311088694 (P.T.A.B. Feb. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte PATRICK H. HAYES, STEVE LANPING HUANG, WEIDONG WILLIAM WANG, HAN-SHENG YUH, JONATHAN CHRISTIAN LIM, and JOYCE M. PRESSEAU ____________________ Appeal 2010-004657 Application 11/088,694 Technology Center 2100 ____________________ Before: MAHSHID D. SAADAT, ERIC S. FRAHM, and TREVOR M. JEFFERSON, Administrative Patent Judges. JEFFERSON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-004657 Application 11/088,694 2 Appellants request rehearing of the September 28, 2012, Decision on Appeal (“Decision”), wherein we affirmed the rejection of claims 1-10 under 35 U.S.C. § 103(a) as being unpatentable over Mitani and Beezer and claims 25-35 under 35 U.S.C. § 103(a) as being unpatentable over Mitani and Allport. We have reconsidered the Decision in light of Appellants’ arguments, but are not persuaded of error for the reasons provided below. Appellants argue that Mitani “does not inherently disclose the claimed element of a mark-up language formatted page having an embedded mark- up language formatted tag comprised of information indicative of/representing a command to be transmitted upon activation of a displayed hyperlink as claimed” (emphasis original) (Req. Reh’g 1-2). Appellants assert that the Board improperly relied on hindsight in discussing that Appellants’ specification consistently referred to and used the term HTML as tagged, embedded or hyperlinked. Req. Reh’g 2. We disagree with Appellants’ argument that in the Board’s Decision the panel relied on hindsight. First, as explained in In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971): Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. Here, Appellant did not dispute the knowledge of a person of ordinary skill in the art. As the Board’s Decision stated, Appellants did not dispute the Examiner’s definition of the term HTML as an abbreviation of Hypertext Markup Language in computer science (Decision 6 (citing Ans. 14). Appeal 2010-004657 Application 11/088,694 3 Appellants also did not dispute the Examiner’s finding that the graphical links presented in Figure 9 of Mitani fall within the definition of hyperlinks. See Ans. 14-15 (defining hyperlink). Applying the Examiner’s definition of the term HTML, we found that the references in Mitani to HTML GUIs with command codes included for browser applications encompassed Appellants’ use of the terms tag, embedded and hyperlink as recited in claim 1. See Decision 7. The Board’s Decision did not rest solely on Appellants’ specification. Req. Reh’g 2. Based on the teachings and suggestions of Mitani and the knowledge of a person of ordinary skill in the art, we found that a person of ordinary skill in the art would understand that Mitani teaches or suggests “HTML GUIs with command codes included for browser application” that encompass Appellants’ claimed “mark-up language formatted page having an first embedded mark-up language formatted page tag comprised of a first field containing first information indicative of a command code to be transmitted upon activation of a first hyperlink displayed on the display.” Decision 5, 6. Appellants argue that because Mitani does not necessarily include a HTML page including an embedded tag or an embedded tag comprised of information indicative of/representing a command to be transmitted upon activation of a displayed hyperlink it cannot present a prima facie case of obviousness. Req. Reh’g 4. Appellants contend that because Mitani does not use “a special extended HTML tag type” disclosed in its application, Mitani’s use of the term HTML does not “inherently disclose [Appellants] described and claimed embedded HTML tag type or the use thereof.” Req. Reh’g 2, 3. Appellants’ argument that Mitani does not use a special extended HTML tag type is not commensurate in scope with the claims that Appeal 2010-004657 Application 11/088,694 4 generically refer to embedded mark-up language formatted page tags. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Appellants do not dispute the definition of HTML and hyperlink offered by the Examiner (see Ans. 14-15), but assert that one of ordinary skill in the art would not necessarily understand HTML GUI with command codes included for browser applications in Mitani to refer embedding, linking or tagging a formatted markup language as recited in Appellants’ claims sufficient to be inherent in the Mitani reference. Req. Reh’g 3-4. We are also not persuaded by Appellants’ argument requiring the HTML to necessarily or inherently require tagging, hyperlinking and embedding. Req. Reh’g 3-4. A determination of obviousness does not require the claimed invention to be expressly suggested by anyone or all of the references. See e.g., In re Keller, 642 F.2d 413, 425 (CCPA 1981). Furthermore, what a reference teaches a person of ordinary skill in the art is not limited to what a reference specifically “talks about” or what is specifically “mentioned” or “written” in the reference. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). In the instant case, Mitani expressly states that “the graphical-user- interface data include command codes for controlling the electronic devices, and the command codes correspond to control buttons displayed as the graphical user interfaces.” Mitani, col. 2, 11. 26-29; see also Ans. 14. We Appeal 2010-004657 Application 11/088,694 5 agree with the Examiner that the inclusion of command codes in the graphical user interface teaches or suggests to an ordinarily skilled artisan that the “graphical user interfaces (GUls) supplied from the electronic devices in the form of hypertext markup language (HTML)” includes command codes. Mitani, col. 1, ll. 57-58, col. 5, ll. 8-10. Based on the teachings and suggestions of Mitani in combination with Beezer and Allport, we agreed with the Examiner’s findings and conclude that the Examiner properly presented a prima facie case of obviousness. Appellants argue that because Allport expressly states that “HTML format will only be used for defining the look of the screens,” a person of ordinary skill in the art would understand that Mitani also only relies on HTML to define the look of the screen. Req. Reh’g 5, 6. We are not persuaded that Allport’s reference to HTML defines the knowledge of one of ordinary skill in the art in understanding Mitani’s discussion of HTML. Appellants’ argument essentially posits that a person of ordinary skill in the art would not be aware of the general capabilities of HTML and hyperlinks as cited by the Examiner (see Ans. 14-15). A person of ordinary skill is a person of ordinary creativity and would be aware of the various uses, including tagging, embedding and hyperlinks associated with HTML. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). This is evidenced by Mitani, which expressly suggests that its HTML GUI includes command codes and does not limit HTML only to the look of displays. Mitani, col. 1, ll.57-58, col. 5, ll. 8-10. Although Appellants are correct that Mitani does not use the express terms of Appellants’ claims, we disagree with Appellants’ contention that Mitani “does not infer the use of an embedded tag comprise[d] of Appeal 2010-004657 Application 11/088,694 6 information indicative of/representing a command to be transmitted upon activation of a displayed hyperlink” without reference to Appellants’ specification. Req. Reh’g 5 (emphasis added). We agree with the Examiner that Mitani teaches or suggests an HTML GUI with command codes and hyperlinks for activation that encompasses Appellants’ claimed HTML embedded tag. See Ans. 3-6, 13-16. DECISION Appellants’ request for rehearing has been granted to the extent that our decision has been reconsidered, but such request is denied with respect to making any modifications to the decision. REQUEST FOR REHEARING DENIED tj Copy with citationCopy as parenthetical citation