Ex Parte Hiraiwa

Board of Patent Appeals and Interferences

Feb 24, 2005

09127954 (B.P.A.I. Feb. 24, 2005)

1 Application for patent filed August 3, 1998, entitled
"Information Presentation Apparatus With Meta-Information
Management Function," which claims the foreign filing priority
benefit under 35 U.S.C. § 119 of Japanese Application 10-008416,
filed January 20, 1998.
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The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
_______________
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte SHINICHI HIRAIWA

Appeal No. 2004-1548
Application 09/127,9541

HEARD: January 27, 2005

Before BARRETT, BARRY, and BLANKENSHIP, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from
the non-final rejection of claims 1-10 and 19-21. Claims 11-18
have been canceled.
We reverse.
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Application 09/127,954
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BACKGROUND
The invention relates to information presentation apparatus
which provides information to an information collection apparatus
(a "web robot") via a network as described in the Summary of the
Invention at pages 2-3 of appellant's brief.
Claim 1 is reproduced below.
1. An information presentation apparatus connected to
an information collection apparatus via a network, the
information presentation apparatus comprising:
a document storage unit which stores documents;
a meta-information table that stores information about
said documents; and
a meta-information management unit which generates
update information about each stored document and records
the update information in the meta-information table, and
when the information collection apparatus makes a request
for stored documents, said meta-information management unit
references said meta-information table, and based on
comparing the update information in said meta-information
table with predetermined criteria, generates a list of
documents corresponding to the predetermined criteria and
transmits the list to the information collection apparatus.
THE REFERENCES
The examiner relies on the following references:
Hashimoto et al. (Hashimoto) 5,893,114 April 6, 1999
(filed November 14, 1996)
Matsumoto 5,897,643 April 27, 1999
(filed April 19, 1996)
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THE REJECTION
Claims 1-10 and 19-21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Matsumoto and Hashimoto.
We refer to the rejection (Paper No. 18) (pages referred to
as "R__") and the examiner's answer (Paper No. 22) for a
statement of the examiner's rejection, and to the brief (Paper
No. 21) (pages referred to as "Br__") and reply brief (Paper No.
24) (pages referred to as "RBr__") for a statement of appellant's
arguments thereagainst.
OPINION
Grouping of claims
Appellant argues that the claims within each of the
following groups stand or fall together and presents arguments
for each group (Br4):
Group 1: Claims 1-6, 8, 9, and 19
Group 2: Claim 7
Group 3: Claim 10
Group 4: Claims 20 and 21
The examiner does not agree, and considers that the claims
should be deemed to stand or fall together because the
limitations in claim 7 (Group 2), claim 10 (Group 3), and claims
20 and 21 (Group 3) are said to be recited in claims 1-6, 8, 9,
and 19 (Group 1) (EA2). Appellant argues that although claims 7,
10, and 20 may include some limitations which are also included
in claim 1, the claims include other features and are entitled to
separate consideration (RBr1-2).
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Application 09/127,954
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We agree with appellant that claims 7, 10, and 20 include
limitations not found in claim 1 and, thus, do not stand or fall
together with claim 1. Since the examiner provides a token
argument for these other claims, we will not remand for the
examiner to address these claims.
Group 1: Claims 1-6, 8, 9, and 19
The examiner finds that Matsumoto substantially discloses
the invention of claim 1 including a network system for managing
information about documents stored thereon (R2). The examiner
finds that Matsumoto does not describe the storage device or the
meta-information table being integrated in the server machine,
but that Hashimoto discloses an analogous collection/presentation
system where the server has document data 110, a document
information management unit 113 and a document database 114 (R3).
The examiner concludes that it would have been obvious to
integrate these items into Matsumoto's server to "expedite the
retrieval of requested documents on the server" (R3).
Appellant argues (Br5):
[B]ased on the teachings of Matsumoto, there would be no
motivation to add document storage capability to the server
of Matsumoto because storing documents in the server is not
necessary for operation of the system described in
Matsumoto. In Matsumoto documents are created by a client 1
and the documents are stored on the external memory 16 of
the client 1. In Matsumoto, the server would not expect the
client to make a request for the stored documents, since the
documents are stored on the external memory 16 of the
client 1 and not on a document storage unit of the
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information presentation apparatus (server) as recited in
claim 1.
The examiner responds that the external memory 16 is not for
the exclusive use of the client 1 and, according to Matsumoto,
the server has access to the memory 16 via the ID Table 27 and
the link information table 28, which are part of the storage
device 26 (EA3-4). The examiner refers to column 4, lines 12-19
and 24-29, and states (EA4):
Clearly from the foregoing textual portions of
Matsumoto, the tables 27 and 28 store control information to
store and retrieve documents in storage device 16. The
Examiner agrees with Appellant that since storage device 16
is accessible by the server through tables 27 and 28 to
store and retrieve documents, there would not be any
motivation for Matsumoto to add another document storage
device to the server.
Appellant argues that there was no agreement that the
storage device 16 is accessible by the server through tables 27
and 28 to store and retrieve documents and "[t]he server 2 in
Matsumoto is merely a record keeper for documents stored on the
external memories 16 of the clients 1 by the clients 1" (RBr3).
It is argued that server does not store documents: it is the
clients 1 that create, update, copy, and move documents (RBr3).
We do not agree with the examiner's finding that the storage
device 16 is accessible to the server 2 via tables 27 and 28.
The cited portions of Matsumoto merely show that the ID table 27
and the link information table 28 in the server's external memory
store copy relationship information about the documents in the
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external memory 16 of the clients 1, not that server 2 accesses
the memory 16. There is no indication that the server 2 has or
needs access to documents in the memory 16. That the server 2
could be modified to have access to memory 16 is a different
issue and would require motivation for the modification.
The examiner also disagrees with appellant's argument that
the server would not expect the client to make a request for
stored documents because "Matsumoto teaches that based on a
request from the client, ID table 27 reads information regarding
a requested document and fetches it to the client" (EA4),
referring to column 4, line 66, to column 5, line 4, column 7,
lines 39-56, and column 9, lines 11-17.
We also disagree with this finding. The examiner does not
appreciate that a request by a client 1 is not a "request for the
stored documents." The server 2 only maintains information
regarding the copy relationship of documents, where the documents
are stored on external memory 16 to the clients 1. Client
machines 1 are the document processing apparatuses,
server machine 2 manages the copy relationship of documents, and
a network 3 connects these machines (col. 3, lines 1-6). When a
new document is created, the user gives it a name and the
document creation section 10 on the client 1 requests and
receives a new document ID from server 2, attaches the ID to the
document along with the date and time of creation, the location,
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and the document name and requests to the ID table records
addition section 21 in the server 2 to add this to table 27
(col. 5, lines 14-35). When the contents are updated, the
document update section 11 on client 1 sets the new time and date
and requests an ID table records-update section 22 in server 2 to
update the table 27 (col. 5, lines 36-52). When a document is
copied by the copying section 12 in the client 1, a new document
ID is issued and a new column is created in the ID table 27 by
server 2 (col. 5, line 57 to col. 6, line 26). When a document
is moved the document move section 13 on client 1 reads out the
document from external memory 16 and transfers it to the
designated client machine 1 and requests the ID table records-
update section 22 on server 2 to perform update processing by
adding the name of the machine to which the document was
transferred (col. 6, lines 27-49). The user can also request a
record for a particular document ID and the copy relationship can
be displayed (col. 6, lines 50-65). Therefore, the "requests"
are for meta-information about the documents: for a document ID
for a new document; to create an entry in table 27 for the new
document; to update the table 27 when documents are modified,
copied, or moved; and for a record to be displayed. The requests
by clients 1 are not "a request for the stored documents," as
claimed. Consequently, there is no motivation to add document
storage capability to Matsumoto because Matsumoto only needs to
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store meta-information. Moreover, there is no suggestion that
the server 2, "based on comparing the update information in said
meta-information table with predetermined criteria, generates a
list of documents corresponding to the predetermined criteria and
transmits the list to the information collection apparatus." The
server in Matsumoto only transmits meta-information. Hashimoto
does not cure these deficiencies in Matsumoto.
We conclude that the examiner has failed to establish a
prima facie case of obviousness. The rejection of claims 1-6, 8,
9, and 19 is reversed.
Group 2: Claim 7
The rejection of claim 7 is reversed because it depends on
claim 1.
Group 3: Claim 10
Claim 10 recites "a document storage unit that stores web
pages," "a meta-information table that stores information
including a status of each web page stored in said document
storage unit," and "creating, in response to a collection
request, a list of web pages in said document storage that have
been modified since a previous collection request."
The examiner states that "Matsumoto's teaching includes
documents that can be invoked and retrieved through links stored
in the server (see items 23 and 25), wherein such hyperlinked
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documents have the same characteristics and functionalities of a
web page" (EA8).
Appellant argues that neither Matsumoto nor Hashimoto make
any mention of either a Web page or a hyperlinked document
(RBr5). In Matsumoto, communication of information about a
document is linked to a document ID and where a client requests
information about a specific document, the client expects to get
in return information about the specific document no matter how
many times the request is made, whereas claim 10 recites
"creating, in response to a collection request, a list of web
pages in said document storage that have been modified since a
previous collection request so that the collection request only
retrieves previously unretrieved documents, thereby reducing the
load on the web page server" (RBr5). We agree that this
limitation is not taught or suggested by Matsumoto or Hashimoto.
While Matsumoto discloses a link information table 28, this
table merely stores information about the copy relationship
between documents that are stored in the external memory device
(col. 4, lines 24-29); these are not hypertext links. Nor are
the documents stored in Matsumoto considered "web pages."
Furthermore, there is no "collection request" and no listing of
pages modified since a previous collection request. The
rejection does not address many limitations of claim 10. The
rejection of claim 10 is reversed.
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Group 4: Claims 20 and 21
The examiner states that "appellant failed to particularly
point how these claims [20 and 21] patentably distinguish over
the prior art of record" (EA8) and the arguments amount to a
general allegation of patentability. The examiner also states
that "the limitations of claims 20-21 are similar to those of the
claims discussed in the rejection" (EA8) and are rejected under
the same rationale.
Appellant notes where specific features of the claims were
argued, but were never addressed by the examiner (RBr5-7).
Based on a review of the record, we agree with appellant
that the examiner has not addressed the specific limitations of
claims 20 and 21. Nevertheless, we decline to remand the
application since this would only harm appellant and further
delay prosecution. We have considered the prior art and do not
find where it teaches or suggests at least the limitations of "a
meta-information unit which: ... requests the information
collection apparatus to issue an information collection request
where a change occurs in the information stored in the first
table." This limitation is not similar to anything found in
claim 1 and is not found in Matsumoto or Hashimoto. Therefore,
the rejection of claims 20 and 21 is reversed.
CONCLUSION
Appeal No. 2004-1548
Application 09/127,954
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The rejection of claims 1-10 and 19-21 is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2004-1548
Application 09/127,954
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