Ex Parte Horiuchi et al

Patent Trial and Appeal Board

Nov 6, 2013

11293478 (P.T.A.B. Nov. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte YOSHIO HORIUCHI,
MASABUMI KOINUMA, KOHJI NAKAMORI,
MARI KUROKI ONISHI, and MASAKI SAITOH
__________

Appeal 2011-011416
Application 11/293,478
Technology Center 2200
__________

Before ERIC GRIMES, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a web
page authoring apparatus, method, and program. The Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

1 Appellants identify the Real Party in Interest as International
Business Machines Corporation (see App. Br. 1).
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Statement of the Case
Background
The Specification teaches:
A Web page authoring apparatus, Web page authoring
method, and program, which allow an author to edit parent
and child documents without difficulty on an edit screen
where a form for embedding a child document in a parent
document is not limited to a rectangle, an actual state of
embedding the child document in the parent document is
displayed at [sic, as] it is, the content of tags is converted
into visual representation without displaying the tags.

(Spec. 5).
The Claims
Claims 1-18 and 20 are on appeal. Claim 1 is representative and reads
as follows:
1. A Web page authoring apparatus, the apparatus
comprising a processor operatively coupled to a computer
memory, the computer memory having disposed within it
computer program instructions for:
individually managing the content of documents forming
the respective portions of a Web page to be edited, as managed
documents;
deriving, from the content of each managed document,
structure information of each managed document including an
embed-related code for embedding another document at a
predetermined embedding position, as document-by-document
structure information;
assembling, as Web page structure information, structure
information of the Web page to be edited by combining the
document-by-document structure information based on the
embed-related code in each document-by-document structure
information;
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generating edit screen data to create an edit screen on
which the tag content of a document to be edited are converted
to visual representation, based on the content of the managed
documents and the Web page structure information;
generating an edit screen based on the edit screen data,
wherein tag content of the document to be edited is displayed
on the edit screen without tags and wherein edit operations may
be performed on the edit screen;
detecting, as a relevant managed document, a managed
document including a portion corresponding to an edited
portion on the edit screen; and
synchronizing the content of the relevant managed
document with the edited content on the edit screen based on
edit operations on the edit screen, including editing the relevant
managed document in dependence upon edits made in the edit
screen,
wherein computer program instructions for generating an
edit screen based on the edit screen data matches the edit screen
data with the edited content on the edit screen based on the edit
operations on the edit screen.

The Issue
The Examiner rejected claims 1-18 and 20 under 35 U.S.C. § 103(a)
as obvious over Treder2 (Ans. 3-8).
The Examiner finds that Treder teaches “deriving (processing), from
contents of each managed document (page component), structure
information of each managed document including embed-related code for
embedding another document at a predetermined embedding position”
(Ans. 3). The Examiner finds that Treder teaches “means for generating edit
screen data to create an edit screen on which tag contents of a document to
be edited are converted to visual representations, based on the contents of

2 Treder et al., US 7,392,510 B1, issued Jun. 24, 2008.
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the managed documents and the Web page structure information” (Ans. 4).
The Examiner finds that Treder teaches “selection of the text box [edited
portion] causes the document/component to be highlighted, which would
require detecting that document. As it is highlighted, it meets the broadest
reasonable interpretation of the term consistent with the specification of
‘relevant managed document’” (Ans. 5).
The Examiner finds it obvious to “save the edits to the source code,
thereby synchronizing the content of the document and the content of the
screen, including the edited managed documents/components, because it was
a goal to provide access for changing the file” (Ans. 5).
The issue presented is: Does the evidence of record support the
Examiner’s conclusion that Treder suggests “deriving, from the content of
each managed document, structure information of each managed document
including an embed-related code for embedding another document at a
predetermined embedding position, as document-by-document structure
information” as required by claim 1?
Findings of Fact
1. Treder teaches that
the web server system includes a trace utility that monitors
the dynamic generation of a requested web page. The trace
utility outputs a mapping structure that maps components of
the web page to corresponding server components that were
invoked. The mapping structure is embedded within the
web page along with code that is executable by an ordinary
web browser to allow a user to interactively view
associations between the page components and the executed
server components. The system also provides restricted
access to development and maintenance documents and
functionality associated with the executable components.
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(Treder, abstract.)
2. Treder teaches that the “dynamic page generator 36 retrieves
and processes the corresponding template, which may be uniquely identified
by the target URL (Uniform Resource Locator) included within the page
request. As the template is processed, calls are made to one or more
executable server components 44” (Treder, col. 7, ll. 47-52).
3. Figure 4A of Treder is reproduced below:

“FIG. 4A illustrates the layout of an example web page . . . and illustrates
an associated inspector view that displays a trace tree” (Treder, col. 3, ll. 50-
52).
4. Treder teaches that the “trace utility 50 may also generate a
trace tree that represents the hierarchy or sequence of executable
components 44 invoked during generation of the page. The inspector
generator 52 is responsible for embedding within the web page JavaScript or
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other executable code for generating the inspector 15” (Treder, col. 8, ll. 17-
22).
5. Treder teaches that “[e]ach element of the web page 10 may be
tagged to indicate the node/component invocation it corresponds to, such as
by using standard HTML naming or a parameter to a JavaScript call”
(Treder, col. 10, ll. 21-23).
6. Treder teaches that “[s]election of the page component 20 with
a pointer 22 causes the component to be surrounded with a box, or otherwise
highlighted on the page 10” (Treder, col. 10, ll. 36-39).
7. Treder teaches that the “initial inspector view 75 in the
illustrated embodiment is generated based solely on information and code
embedded within the web page 10” (Treder, col. 10, ll. 48-50).
Principles of Law
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992).
To establish prima facie obviousness of a claimed invention, all the
claim limitations must be taught or suggested by the cited prior art. In re
Royka, 490 F.2d 981, 985 (CCPA 1974).
“[P]rogramming creates a new machine, because a general purpose
computer in effect becomes a special purpose computer once it is
programmed to perform particular functions pursuant to instructions from
program software.” Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323, 1328-
29 (Fed. Cir. 2011) (quoting In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994)).
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Analysis
We begin with claim interpretation, since before a claim is properly
interpreted, its scope cannot be compared to the prior art. The limitation at
issue is “deriving, from the content of each managed document, structure
information of each managed document including an embed-related code for
embedding another document at a predetermined embedding position, as
document-by-document structure information” in claim 1.
The Examiner finds that “the claim does not recite any execution of
the embed-related code to embed at a position. There is only the intended
use of being used for embedding another document at a predetermined
embedding position” (Ans. 8). The Examiner’s intended use analysis
appears to be based upon a finding that Treder’s code “is used to generate
the web page [Fig. 4a] which clearly shows that the results of execution have
been embedded at specific positions” (Ans. 4).
We are not persuaded. Claim 1 is drawn to an apparatus that includes
computer program instructions where the instructions require a step of
“deriving . . . structure information . . . including an embed-related code”.
This is a positive process step where the software must function to derive the
embed-related code. This differs from an intended use recitation since the
embed-related code which is derived in this step is used in the next step for
“assembling . . . structure information of the Web page to be edited”.
Appellants contend that Treder “describes an inspector for displaying
to developers the executable components that generate a dynamic web page”
(App. Br. 10). Appellants contend that “what Treder actually discloses
instead is an inspector for displaying to developers the executable
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components that generate a dynamic web page. The inspector lists in the
order of execution the executable components used to dynamically generate
the web page” (App. Br. 10).
We find that Appellants have the better position. Since the Examiner
bears the burden of establishing a prima facie case of obviousness, the
Examiner must show that Treder teaches or suggests the step of “deriving,
from the content of each managed document, structure information of each
managed document including an embed-related code for embedding another
document at a predetermined embedding position, as document-by-
document structure information” as required by claim 1. Instead, the
Examiner found that this step is simply an intended use recitation, a finding
with which we disagree. Therefore, since the rejection lacks a teaching of a
required step in claim 1, the Examiner has not shown that Treder renders the
claim prima facie obvious.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Treder suggests “deriving, from the content of each managed document,
structure information of each managed document including an embed-
related code for embedding another document at a predetermined embedding
position, as document-by-document structure information” as required by
claim 1.

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SUMMARY
In summary, we reverse the rejection of claims 1-18 and 20 under
35 U.S.C. § 103(a) as obvious over Treder.

REVERSED
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