Ex Parte Heiney et al

Patent Trial and Appeal Board

Feb 2, 2016

13095647 (P.T.A.B. Feb. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/095,647 04/27/2011
22879 7590 02/04/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Ronald Lee Heiney
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
82265411 3038
EXAMINER
TSUI, WILSON W
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
02/04/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD LEE HEINEY, BRYON S. PRUITT,
MATTHEWF. RYAVEC, and
ANASTASIY A ALEKSANDROVNA ZDZITA VETSKA YA
Appeal2014-001824
Application 13/095,647
Technology Center 2100
Before ALLEN R. MacDONALD, KEVIN C. TROCK, and
NABEEL U. KHAN, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-001824
Application 13/095,647
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1--4 and 6-20. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1, 7, and 10 under appeal read as follows (emphasis
and formatting added):
1. A computer-readable storage medium containing
instructions to build an interactive document that, when
executed, cause a computer to:
[A.] display a page of the document and a user interface to
enable building of the page;
[B.] receive via the interface[:]
[i.] a designation of an end user role applicable to the
document,
[ii.] a designation of a state for the page; the state for the
page defining the status of the interactive
document,
[iii.] a designation of a property to be applied to a
component of the page when the page is accessed,
in the state, by an end user identified with the role;
[iv.] in which the interface comprises a role control that,
while selected, renders changes to the
functionality of the component applicable to the
end user role represented by the role control when
the end user accesses the component.
7. The medium of claim 1, wherein the interface
includes a component control to enable designation of a
property to a component, the designation conditional upon
page state and end user role.
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10. A system to build an interactive document,
compnsmg:
[A.] a display module, operable to display a page of the
document and a user interface to enable building of the
page;
[B.] a role module, operable to receive via the interface a
designation of an end user role applicable to the
document;
[C.] a state module, operable to receive via the interface a
designation of a state for the page; [and]
[D.] a property module, operable to receive via the interface a
designation of a property to be applied to a component of
the page when the page is accessed, in the state, by an
end user identified with the role.
Rejections
The Examiner rejected claims 1-9 under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. 1
The Examiner rejected claims 1, 4, 6-10, 12-14, 16, and 17 under
35 U.S.C. § 102(e) as being anticipated by Parker et al. (US 7,933,952 B2;
Apr. 26, 2011). 2
The Examiner rejected claims 2, 11, and 18-20 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Parker and Davidson
et al. (US 2008/0126953 Al; May 29, 2008). 3
1 Separate patentability is not argued for claims 2-9. Except for our ultimate
decision, the § 101 rejection of these claims is not discussed further herein.
2 Separate patentability is not argued for claims 4, 6-9, 12-14, 16, and 17.
Except for our ultimate decision, this rejection of these claims is not
discussed further herein.
3
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Application 13/095,647
The Examiner rejected claims 3 and 15 under 35 U.S.C. § 103(a) as
being unpatentable over various combinations of Parker, Davidson, and
Varadarajan et al. (US 2008/0040340 Al; Feb. 14, 2008). 4
Appellants ' Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 101 because.
Appellant's specification further defines computer readable
medium as comprising "anyone of many physical media such
as, for example, electronic, magnetic, optical, electromagnetic,
or semiconductor media." (Id.) (emphasis added). Thus,
contrary to the Examiner's assertions, the computer readable as
recited in claim 1 comprises statutory subject matter under 101
because the physical media "contains," "stores" or "maintains"
data that is executed by a processor. In this respect, the
computer-readable storage medium does not include signals.
App. Br. 12, emphasis added.
Additionally, by reciting a "computer-readable storage
medium," claim 1 excludes the propagation media that the
Office Action cites as problematic. The term "storage media"
would not include any embodiments in which the medium is
merely a propagation medium, as opposed to a medium that
actually stores data. This has been confirmed by the Board of
Patent Appeals and Interferences ("BP AI"). In Ex Parte Hu,
App. No. 2010-000151 (BPAI 2012), the BPAI held that the
3 Separate patentability is not argued for claims 2, 11, 19, and 20. Except for
our ultimate decision, this rejection of these claims is not discussed further
herein.
4 Separate patentability is not argued for claims 3 and 15. Appellants address
these claims only by referencing the arguments for claims 1 and 10. The
rejection of these claims turns on our decisions as to claims 1 and 10.
Except for our ultimate decision, this rejection of these claims is not
discussed further herein.
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claimed "computer-readable storage medium" is "directed to a
tangible storage medium, which can be read by a computer" and
therefore falls "within one of the four statutory classes of
35 U.S.C. § 101" and qualifies as patentable subject matter.
App. Br. 12.
2. Further, Appellants contend that the Examiner erred in rejecting
claim 1under35 U.S.C. § 102(e) because:
Parker does not teach an interface comprising a role control that
"renders changes to the functionality of the component
applicable to the end user role represented by the role control
when the end user accesses the component." (Claim 1 ). []
Additionally, Appellant asserts that Parker also fails to
teach a user interface that comprises "a role control that, while
selected, renders changes to the functionality of the
component." (Id.) .... Parker merely teaches that a "user can
also define the users or participants who can interact with each
section of the assembly document." (Parker, col. 8, 11. 65-67).
There is no teaching or suggestion that changes are rendered to
the functionality of a component while a role control is
selected.
App. Br. 15, Appellants' emphasis omitted, panel emphases added.
3. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(e) because:
Parker fails to teach or suggest that "a designation of a state for
the page; the state for the page defining the status of the
interactive document" is received at an interface. (Claim 1 ).
App. Br. 15.
Appellant notes that these lines do not teach that the role of a
user is used in implementing the access/edit state of the page, to
define the output of the interactive document based upon
specific user inputs of the role, but instead merely states that
" [ t ]he user can also define the users or participants who can
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interact with each section of the assembly document." (Parker,
col. 8, 11. 65-67)[].
App. Br. 16.
4. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(e) because:
Parker fails to teach or suggest that "a designation of a property
to be applied to a component of the page when the page is
accessed, in the state, by an end user identified with the role" is
received via the interface. (Claim 1 ).
App. Br. 16. Further:
Parker is clearly only teaching permissions that are given to
editors or collaborators of the document while claim 1 recites
that "propert[ies]" are applied to components of a page when
that ''page is accessed, in the state, by an end user." (Claim 1 ).
None of this is taught in Parker.
App. Br. 17.
5. Appellants contend that the Examiner erred in rejecting claim 10
under 35 U.S.C. § 102(e) because:
Parker is not teaching "a role module, operable to receive via
the interface a designation of an end user role applicable to the
document." (Claim 10) (emphasis added).
App. Br. 19.5
6. Appellants contend that the Examiner erred in rejecting claim 10
under 35 U.S.C. § 102(e) because:
Parker is merely teaching that certain editors within the
collaboration process are given the authorization to interact
5 Appellants also argue as to claim 10 that Parker lacks "functionality of the
section is based on [end-users]." App. Br. 19. However, unlike claim 1,
claim 10 has no such limitation. We do not discuss this further herein.
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with a section of the document. No where does Parker discuss
receiving via the interface a designation of a state for the page.
App. Br. 20.
7. Appellants contend that the Examiner erred in rejecting claim 10
under 35 U.S.C. § 102(e) because:
Parker is clearly only teaching permissions that are given to
editors or collaborators of the document while claim 10 recites
that "propert[ies]" are applied to components of a page when
that ''page is accessed, in the state, by an end user." (Claim
10). None of this is taught in Parker.
App. Br. 21.
8. Appellants contend that the Examiner erred in rejecting claim 7
under 35 U.S.C. § 102(e) because:
[W]hat Parker is not teaching is that the "designation [is]
conditional upon page state and end user role." (Claim 7)
(emphasis added). There is no teaching or suggestion that the
page state as well as the end user role is used to designate a
property to a component.
App. Br. 23.
9. Appellants contend that the Examiner erred in rejecting claim 18
under 35 U.S.C. § 103(a) because:
Parker is merely teaching that certain editors within the
collaboration process are given the authorization to interact
with a section of the document. No where does Parker discuss
receiving via the interface a designation of a state for the page.
App. Br. 25.
10. Appellants contend that the Examiner erred in rejecting claim 18
under 35 U.S.C. § 103(a) because:
Parker is clearly only teaching permissions that are given to
editors or collaborators of the document while claim 18 recites
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that "propert[ies]" are applied to components of a page when
that ''page is accessed, in the state, by an end user." (Claim
18). None of this is taught in Parker.
App. Br. 26.
11. Appellants contend that the Examiner erred in rejecting claim 18
under 35 U.S.C. § 103(a) because:
[The Examiner] argues that Davidson teaches "a rendition
property is applied upon detection of user role in a presentation
production role." (Id.). This is incorrect. Davidson is directed to
providing shared documents during a Web conference. (See,
Davidson abstract). In particular Davidson teaches that during a
web conference "different renditions of a shared document ...
are provided to different participants in the Web conference,
based on the information stored in the User Roles." (Davidson,
para. 26). Here, the Examiner is attempting to argue that merely
giving access to view a document based on a user's role is
tantamount to receiving a designation of a property to be
applied to a component of the page "when the page is accessed,
during a production mode and in the state, by an end user
identified with the role." (Claim 18) (emphasis added). Here
the Examiner is asserting that simply viewing a presentation is
"production" or is activity in a "production mode." (Id.). This is
incorrect.
App. Br. 26-27.
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being directed to
non-statutory subject matter?
Did the Examiner err in rejecting claims 1 and 10 as being
anticipated?
Did the Examiner err in rejecting claim 18 as being obvious?
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ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
Appeal Brief arguments (Appeal Brief and Reply Brief) that the Examiner
has erred.
As to Appellants' above contention 1, we disagree that the Examiner
was mistaken to reject claim 1 under 35 U.S.C. § 101. The Examiner
correctly points out that Appellants' Specification at i-f 23 does not
necessarily preclude transitory media. Contrary to Appellants' argument,
the Specification does not define the term "computer readable medium."
Rather, Appellants' Specification at i-f 23 merely provides examples.
Contrast this to Appellants' Specification at pages 2-7 where Appellants
explicitly state the meaning of numerous terms. No such explicit definition
of the term "computer readable medium" occurs in i-f 23.
Further, although Appellants cmTectly note that, in });; parte Hu, the
Board interpreted "computer readable storage medium" to cover only
statutory subject matter, the Examiner correctly points out the BP AI decision
(ex parte Hu) is not precedential as to the meaning of the word storage as
used in claim 1. The Board subsequently held, in a precedential decision on
similar facts, that, absent an express or implied limitation in the
specification, the term "storage" does not necessarily limit a claim to non-
transitory forms. Ex parte Mewherter, 107 USPQ2d 1857, 1859-62 (PTAB
2013) (precedential) (holding claims directed to "machine-readable storage
medium" ineligible under § 101 because that term encompasses transitory
media). Here; Appellants have not dernonstrated that the limitation at issue
is expressly or inherently limited to non-transitory forms. For these reasons,
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we sustain the decision to reject claims 1----9, as cun-ently drafted, under 35
U.S.C. § 101.
Separately, we point out that even if Appellants' claim 1 were
amended to reflect Appellants' argued claim construction (e.g., by adding
"non-transitory" to claim 1, or even narrowly limiting the "storage medium"
consisting of a hard drive), the claim would still encompass non-statutory
subject matter under 35 U.S.C. § 101. At Appellants' Specification i123,
Appellants act as their own lexicographer to define "executable" broadly to
include "source code."
In this respect, the term "executable" includes a program file
that is in a form that can be directly (e.g., machine code) or
indirectly (e.g., source code that is to be compiled) performed
by the processor 204.
Unlike "machine code," such "source code that is to be compiled" is no
more part of the processor than a circuit diagram of the wiring
interconnections of the processor. Rather, such "source code" is an
abstraction that even in any of its non-transitory forms does not provide a
practical application until, as admitted by Appellants, it is compiled into
machine code. In addition to any amendment recommended by the
Examiner to cure the claims problems under § 101, we recommend deletion
of the above sentence from Appellants' Specification.
As to Appellants' above contention 2, we agree. We disagree with the
Examiner's reasoning that Parker anticipates claim 1. While Parker does
change the functionality of access as set forth by the Examiner, that
functionality change is to the assembly workspace within the collaboration
application, and not to the document as required by the "functionality of the
component" limitation of claim 1.
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As to Appellants' above contentions 3, 6, and 9, we disagree.
Contrary to Appellants' argument that Parker does not teach designation of a
state of a page, Parker explicitly teaches such state designation. Appellants
define "state" as:
As used in this specification and the appended claims, a "state"
means a condition or status of the interactive document.
Spec. i-f 18. Parker at column 5 explicitly shows that an author can change a
section's status to "complete." Parker at column 14 explicitly states that
"complete" locks the section (i.e., no editing can be done while the
document is in this status).
As to Appellants' above contentions 4, 7, 8, and 10, we disagree.
Appellants' arguments tum on the claim requirement for a "state" being used
during page access by an end user. Contrary to Appellants' argument that
Parker lacks a "state," Parker explicitly teaches such state designation as
discussed directly above.
As to Appellants' above contention 5, we disagree. We agree with the
Examiner that "defin[ing] the users or participants who can interact with
each section" (Parker 8:66---67) is the claimed "designation of an end user
role applicable to the document."
As to Appellants' above contention 11, we disagree. Appellants
present the Examiner's position as to the "presentation" (of Davidson)
teaching the "production mode" limitation of claim 18, and then Appellants
present a conclusory assertion that "This is incorrect." App. Br. 26.
Additionally, Appellants present teachings from the Davidson reference and
further parts of the Examiner's position, and then Appellants present a
second conclusory assertion that "This is incorrect." App. Br. 27. We do not
find where Appellants present substantive argument as to Examiner error in
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finding that the "presentation" of Davidson teaches the "production mode"
limitation of claim 18. Such unsupported attorney argument, is entitled to
little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997);
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1, 4, and 6-9 as being anticipated under 35 U.S.C. § 102(e).
(2) Based on their dependency from claim 1, Appellants have
established that the Examiner erred in rejecting claims 2 and 3 as being
unpatentable under 35 U.S.C. § 103(a).
(3) The Examiner did not err in rejecting claims 1--4 and 6-9 under
35 U.S.C. § 101, as being directed to non-statutory subject matter.
(4) The Examiner did not err in rejecting claims 10, 12-14, 16, and
17 as being anticipated under 35 U.S.C. § 102(e).
(5) The Examiner has not erred in rejecting claims 11, 15, and 18-20
as being unpatentable under 35 U.S.C. § 103(a).
( 6) Claims 1--4 and 6-20 are not patentable.
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DECISION
The Examiner's rejection of claims 1, 4, and 6-9, as being anticipated
under 35 U.S.C. § 102(b), is reversed.
The Examiner's rejection of claims 2 and 3 as being unpatentable
under 35 U.S.C. § 103(a) is reversed.
The Examiner's rejection of claims 1--4 and 6-9 under 35 U.S.C.
§ 101, as being directed to non-statutory subject matter, is affirmed.
The Examiner's rejection of claims 10, 12-14, 16, and 17, as being
anticipated under 35 U.S.C. § 102(b ), is affirmed.
The Examiner's rejections of claims 11, 15, and 18-20 as being
unpatentable under 35 U.S.C. § 103(a) 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)(l )(iv).
AFFIRMED
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