Ex Parte Kraft

Board of Patent Appeals and Interferences

Aug 14, 2008

09825210 (B.P.A.I. Aug. 14, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte REINER KRAFT
__________

Appeal 2008-0875
Application 09/825,210
Technology Center 2100
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Decided: August 14, 2008
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Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1, 5, 6, 8-11, 15, 16, 18-22, and 24-26.1

1 We note that claims 15, 16, 18, and 19 improperly depend directly or
indirectly from a cancelled claim (claim 13 was cancelled by the
Amendment received on Sept. 27, 2004).
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Claims 2-4, 7, 12-14, 17, and 23 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).

THE INVENTION
The disclosed invention relates generally to the field of data
processing, and particularly to a software system and associated method for
use with computers and documents on the Internet. More specifically,
Appellant’s invention is directed to a system for saving the content of a
target document bundled with contextual metadata, such as the location of a
source document, as attributes of the target document (Spec. 1).
Independent claim 1 is illustrative:
1. A method of associating a destination document to
a source document during a save operation, comprising:

defining contextual metadata of the source
document, wherein the contextual metadata includes a
location of the source document;

identifying a target document by a content and
contextual data;

bundling the target document, and the contextual
metadata of the source document as attributes of the
target document;

saving a bundled target document as the
destination document;

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wherein bundling the target document comprises
merging the contextual metadata of the source document
and the contextual data of the target document as
attributes of the target document;

automatically synchronizing the destination
document to the target document, to reflect changes in
the target document; and

wherein defining the contextual metadata of the
source document further includes defining a navigation
path from the source document to the target document, to
enable a client to return to the source document from the
target document, even if one or more intermediate
documents along the navigation path no longer exist.

THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the rejections:
Lumsden US 6,006,217 Dec. 21, 1999
Heninger US 6,470,349 B1 Oct. 22, 2002
(filed Mar. 11, 1999)
Logan US 6,665,659 B1 Dec. 16, 2003
(filed Feb. 1, 2000)

THE REJECTIONS
1. Claims 1, 5, 6, 10, 11, 15, 16, 20-22, and 26 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Logan in
view of Heninger.
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2. Claims 8, 9, 18, 19, 24, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Logan in view of Heninger
and Lumsden.

PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007). To be nonobvious, an
improvement must be “more than the predictable use of prior art elements
according to their established functions.” Id. at 1740. Appellant has the
burden on appeal to the Board to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On
appeal to the Board, an applicant can overcome a rejection [under § 103] by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Therefore,
we look to Appellant’s Brief to show error in the proffered prima facie case.

ANALYSIS
Claims 1, 5, 6, 10, 11, 15, 16, 20-22, and 26.
We consider the Examiner’s rejection of claims 1, 5, 6, 10, 11, 15, 16,
20-22, and 26 as being unpatentable over Logan in view of Heninger. Since
Appellant’s arguments with respect to this rejection have treated these
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claims as a single group which stand or fall together, we select independent
claim 1 as the representative claim for this rejection. See 37 C.F.R.
§ 41.37(c)(1)(vii).
We consider the following issues that flow from the contentions of the
Appellant and the Examiner:
We consider first the question of whether Logan’s citations teach
and/or suggest a “destination document,” as claimed (claim 1).
Appellant notes that the Examiner has read the claimed “destination
document” on one of Logan’s citations (Br. 13). Appellant restates the
Examiner’s finding that Logan teaches that each citation is preferably
expressed as a valid XML document (Br. 13; see also Ans. 9; Logan, col. 5,
ll. 13-14). Nevertheless, Appellant argues a definition from the
Specification as to the meaning of a “destination document,” as that term is
used regarding the present invention (Br. 14). In light of this definition,
Appellant contends that the claimed “destination document” is not taught by
Logan (id.).
It is the Appellant’s burden to precisely define the invention, not the
PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Although a
patent applicant is entitled to be his or her own lexicographer of patent claim
terms, in ex parte prosecution it must be within limits. In re Corr, 347 F.2d
578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the Specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to
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be construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)
(although an inventor is free to define the specific terms used to describe the
invention, this must be done with reasonable clarity, deliberateness, and
precision; where an inventor chooses to give terms uncommon meanings, the
inventor must set out any uncommon definition in some manner within the
patent disclosure so as to give one of ordinary skill in the art notice of the
change).
Here, when we consider Appellant’s definition in the Specification,
we note that Appellant prefaces the definition for a “destination document”
with an express statement that “[t]he following definitions . . . are intended
to facilitate the understanding of the present invention without limiting its
scope,” as follows:
The following definitions and explanations provide background
information pertaining to the technical field of the present
invention, and are intended to facilitate the understanding of the
present invention without limiting its scope:
. . .
Destination document: A final document or web page which is
comprised of a target document that is bundled with contextual
data about the source document.
(Spec. 6, ll. 2-4 and 10-11, emphasis added).
Because Appellant’s definition for a “destination document” is clearly
not intended to limit the scope of the claimed subject matter, it is our view
that the record before us supports the Examiner’s finding that the claimed
“destination document” is taught and/or suggested by Logan’s citations
(Ans. 9; see also Logan, col. 2, ll. 1-9). As pointed out by the Examiner,
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Logan expressly teaches that each citation is preferably expressed as a valid
XML document (Ans. 9; see also Logan, col. 5, ll. 13-14).
We consider next the question of whether the combination of Logan
and Heninger teaches and/or suggests synchronization between target and
destination documents, as argued by Appellant (Br. 15).
While Appellant argues that “Logan does not describe target
documents that are synchronized with the destination documents” (Br. 15,
¶2), we note that the Examiner has relied on Heninger for the teaching
and/or suggestion of the claimed synchronization (Ans. 5). Nevertheless,
Appellant further contends that “even if Heninger describes synchronization
between documents, it still does not describe the synchronization between
the target and destination documents . . . .” (Br. 15, ¶2).
In response, we note that the Examiner has relied upon Logan for the
teaching and/or suggestion of the claimed “destination documents.” (Ans.
4). The Examiner looks to the secondary Heninger reference for the express
teaching of “ensur[ing] that the target stays synchronized with the source.”
(Heninger, col. 16, ll. 19-20) (Ans. 5). The Examiner’s rejection is based
upon the combination of Logan and Heninger.
However, Appellant’s arguments are directed to the individual
references in isolation rather than the combination of references as a whole.
The Court of Appeals for the Federal Circuit has determined that one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. In re Merck & Co., 800
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F.2d 1091, 1097 (Fed. Cir. 1986). Therefore, we see no error in the
Examiner’s reasoning, as articulated on pages 10 and 11 of the Answer.

Appellant further argues:
More specifically, the present invention recites automatically
synchronizing the destination document to the target document,
to reflect changes in the target document. The synchronization
step, in conjunction with the bundling step, enable the
present invention to track down the source document even
if the intermediate documents change. This feature is not
taught in the cited references, whether considered individually
or in combination with each other, and none of the references
suggests such combination. As a result, the two cited references
cannot be properly combined.
(Br. 15).
The Examiner disagrees. The Examiner contends that Appellant is
arguing limitations that are not recited in the claim (Ans. 11).
After considering the record before us, we agree with the Examiner’s
position. We note that patentability is based upon the claims. “It is the
claims that measure the invention.” SRI Int’l v. Matsushita Elec. Corp. of
America, 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). “Moreover,
limitations are not to be read into the claims from the specification.” In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989)).
Here, we note that the language of the claim actually recites in
pertinent part: “to enable a client to return to the source document from the
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target document, even if one or more intermediate documents along the
navigation path no longer exist.” (Claim 1, emphasis added). We agree
with the Examiner that the argued limitation of “even if the intermediate
documents change” (as argued by Appellant) is not the same as the recited
limitation of “even if one or more intermediate documents along the
navigation path no longer exist” (as claimed) (emphasis added). The only
mention of “changes” recited in claim 1 is with respect to the target
document: i.e., “automatically synchronizing the destination document to the
target document, to reflect changes in the target document” (claim 1,
emphasis added). We have considered Appellant’s arguments only to the
extent that they are directed to claimed subject matter. Moreover, because
the claimed “intermediate documents along the navigation path [may] no
longer exist,” it is unclear whether the “intermediate documents” are part of
the claimed invention or not (claim 1, emphasis added).
On this record, we conclude that Appellant has not sustained the
requisite burden on appeal in providing arguments or evidence persuasive of
error in the Examiner’s rejection of representative claim 1 (and claims 5, 6,
10, 11, 15, 16, 20-22, and 26 that fall therewith) as being unpatentable over
Logan in view of Heninger. See 37 C.F.R. § 41.37(c)(1)(vii).

Dependent claims 8, 9, 18, 19, 24, and 25
We note that dependent claims 8, 9, 18, 19, 24, and 25 were not
separately argued in the Brief. Therefore, we sustain the Examiner’s
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rejection of claims 8, 9, 18, 19, 24, and 25 as being unpatentable over Logan
in view of Heninger and Lumsden for the same reasons discussed supra with
respect to representative independent claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).

CONCLUSION OF LAW
We conclude that Appellant has not met his burden of showing that
the Examiner erred in rejecting claims 1, 5, 6, 8-11, 15, 16, 18-22, and 24-26
under 35 U.S.C. § 103(a) for obviousness.

DECISION
We affirm the Examiner’s decision rejecting claims 1, 5, 6, 8-11, 15,
16, 18-22, and 24-26 under 35 U.S.C. § 103(a) for obviousness.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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