Ex Parte Lai

Board of Patent Appeals and Interferences

Dec 15, 2010

10833170 (B.P.A.I. Dec. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte FREDERICK CHEE-KIONG LAI
____________________

Appeal 2009-005827
Application 10/833,1701
Technology Center 2100
____________________

Before JEAN R. HOMERE, JAY P. LUCAS, and JAMES R. HUGHES,
Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed April 28, 2004. The real party in interest is Research In
Motion, Ltd. (App. Br. 1.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/833,170

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STATEMENT OF THE CASE
Appellant appeals from the Examiner’s rejection of claims 1-8 and 10-
17 under authority of 35 U.S.C. § 134(a). Claim 9 has been canceled. (App.
Br. 2, 22.) The Board of Patent Appeals and Interferences (BPAI) has
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellant’s Invention
The invention at issue on appeal relates to a method of storing a
Universal Resource Identifier (URI) of a document composed in a markup
language, and determining a label for the URI based on values of markup
language elements of the document. (Spec. ¶¶ [0001], [0012]-[0013].)3
Representative Claim
Independent claim 1 further illustrates the invention. It read as
follows:
1. A method of storing a Universal Resource Identifier
(URI) of a document composed in a markup language, said
method comprising:
storing said URI of said document, thereby creating a
stored URI;
determining a label based on selecting between a value of
a first attribute of an element of said document and a value of a
second attribute of said element; and
storing said label in association with said stored URI.

3 We refer to Appellant’s Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed April 17, 2008; and Reply Brief (“Reply Br.”) filed August 12, 2008.
We also refer to the Examiner’s Answer (“Ans.”) mailed June 12, 2008.
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References
The Examiner relies on the following references as evidence of
unpatentability:
Krause US 2002/0196273 A1 Dec. 26, 2002

Vedullapalli US 2003/0233620 A1 Dec. 18, 2003

Rejections on Appeal
The Examiner rejects claims 1, 2, 6-8, and 10-17 under 35
U.S.C. § 102(b) as being anticipated by Krause.4
The Examiner rejects claims 3-5 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Krause and Vedullapalli.

ISSUE
Based on our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us is as follows:
Does the Examiner err in finding Krause discloses determining a label
based on selecting between a value of a first attribute of an element of said
document and a value of a second attribute of said element?

4 The Examiner’s statement of the rejection (Ans. 3; Fin. Rej. 3) incorrectly
lists claims 1, 2, and 6-17 as rejected under 35 U.S.C. § 102(b) as being
anticipated by Krause. The discussion of the rejection, however, only
discusses claims 1, 2, 6-8, and 10-17. Claim 9 has been canceled. (App. Br.
2, 22.) Appellant correctly describes the grounds of rejection (App. Br. 7)
and does not contest the erroneous statement of rejection. We, therefore,
find this to be harmless error, and correct the statement of rejection for
clarity.
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FINDINGS OF FACT (FF)
Appellant’s Specification
1. Appellant’s Specification describes markup language (HTML)
document elements as information delimited by at least one (a start) tag –
“[e]lements of a markup language document are delimited by ‘tags.’” (Spec.
¶ [0005].) Appellant’s Specification further explains that:
elements may have associated properties, called attributes,
which may have values (by default, or set by authors or scripts).
Attribute/value pairs appear before the final “>” of an element’s
start tag. Any number of (legal) attribute/value pairs, separated
by spaces, may appear in an element’s start tag. They may
appear in any order.
(Spec. ¶ [0006].) These explanations of are consistent with the knowledge
of one knowledgeable in the art web page development. See, e.g. Index of
elements in HTML 4, World Wide Web Consortium (December 24, 1999)
(available at http://www.w3.org/TR/1999/REC-html401-
19991224/index/elements); Tags used in HTML, World Wide Web
Consortium (November 3, 1992) (available at
http://www.w3.org/History/19921103-
hypertext/hypertext/WWW/MarkUp/Tags.html).
Krause Reference
2. Krause describes an Internet web site portal (start page) that
allows a use to customize a unique start page to display information and
material of interest to the user in a format specified by the user, providing
improved control and additional functionality to the user. (¶¶ [0003],
[0017]-[0018], [0054].) Krause describes associating a user’s name with the
unique customizable web page, allowing the user to control access to the
page, and to store information of interest, such as links to other web sites
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(pages) and framed material, on the web page. The links may directly
display material (framed material) and/or may be clickable links represented
by text, buttons, images or drop-down menus. A user specifies the linked
material or link, its representation, and various attributes in a database. (¶¶
[0018]-[0020], [0024], [0025], [0028], [0029], [0034], [0041], [0054],
[0057], [0060]-[0062], [0064-[0066]; Figs. 3, 4, 5.)
3. Krause’s figure 3 depicts a typical database entry for a display
element (link) on the customizable web page. (¶ [0041]; Fig. 3.) The entry
includes the user’s userID (element 302) – the identification number for the
user and the corresponding unique web page, as well as a uniform resource
locator (URL) (Linkhttp, element 310) for the link, and may also include a
link to an image (Linkimage, element 306) and/or a link name (Linkname,
element 308) to be displayed with or represent the link. (¶ [0060]; Fig. 3.)

ANALYSIS
Appellant has the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner sets forth a
detailed explanation of a reasoned conclusion of anticipation in the
Examiner’s Answer with respect to Appellant’s independent claims 1, 11-13,
and 15-17, and dependent claims 2, 6-8, 10, and 14. (Ans. 3-7, 9-11.) The
Examiner also sets forth a detailed explanation of a reasoned conclusion of
obviousness in the Examiner’s Answer with respect to Appellant’s
dependent claims 3-5. (Ans. 7-9, 11-12.) Therefore, we look to the
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Appellant’s Briefs to show error in the proffered reasoned conclusions. See
Kahn, 441 F.3d at 985-86.
Arguments Concerning the Examiner’s Rejection of
Representative Claim 1 under 35 U.S.C. § 102(b)
The Examiner rejects Appellant’s independent claim 1 as being
anticipated by Krause. (Ans. 3-4.) The Examiner finds that Krause
discloses storing a Universal Resource Identifier (URI) of a document (web
page) (Ans. 4 (citing Krause ¶¶ [0060], [0069]-[0070])) as well as
determining a label of the URI – “based on selecting between a value of a
first attribute of an element of said document and a value of a second
attribute of said element . . . as demonstrated in the figure and cited text, a
label is determined for the stored URL based on as a first attribute
(linkname) of an element (link) and a second attribute (linkimage) of the
element” (Ans. 3-4 (citing Krause ¶¶ [0060], [0070], [0082], [0084])).
Appellant contends, inter alia, that Krause does not disclose “selecting
between any values in the document (i.e. the webpage) when determining a
label.” (App. Br. 8 (see App. Br. 8-10; Reply Br. 4-5).)
Based on the record before us, we find error in the Examiner’s
anticipation rejection of Appellant’s claim 1. We agree with Appellant that
Krause does not disclose the disputed feature of “determining a label based
on selecting between a value of a first attribute of an element of said
document and a value of a second attribute of said element” for essentially
the reasons espoused by Appellant. We begin our analysis by construing the
disputed feature.
The dispute before us hinges on the disagreement of the Examiner and
Appellant as to what constitutes “selecting between a value of a first
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attribute of an element of said document and a value of a second attribute of
said element.” We note that the “document” referenced in the body of the
claim is a “document composed in a markup language” as recited in the
claim preamble. Appellant’s Specification provides definitions for markup
language document elements and attributes of these elements, as well as
examples of values for the attributes, which are consistent with common
knowledge of those skilled in the art. (FF 1.) Accordingly, we construe
“determining a label based on selecting between a value of a first attribute of
an element of said document and a value of a second attribute of said
element” as recited in Appellant’s claim to mean ascertaining (creating) a
label (for a stored URI/URL) by selecting either the value of (information
in) a first attribute or a second attribute of an element of a markup language
document. (See Spec. ¶ [0034]; see also Spec. ¶¶ [0025]-[0027], [0031]-
[0033], [0036].) Thus, Appellant’s claim requires choosing between markup
language document attributes to provide a label for the URI/URL of the
document.
As detailed in the Findings of Fact section supra, Krause describes a
database entry for a link to be displayed on a user’s unique customizable
web page. The entry includes a userID for the user and the user’s web page
as well as a URL for the link. The entry may also include an image and/or a
link name to be displayed with or represent the link. (FF 2 & 3.) The
Examiner asserts that the image and link name meet the attribute values
recited in Appellant’s claim. (Ans. 3-4, 9.) We find, however, that the
image is not described as an attribute of the document to be linked. Rather,
it is described as a link to an image that may be displayed with (associated
with) the link to the web page. (FF 3; Krause ¶ [0060].) Similarly, the link
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name is not described as an attribute of the document to be linked. Rather, it
is described as user determined text that may be displayed with (associated
with) the link to the web page. (FF 3; Krause ¶ [0060].) Appellant correctly
identifies that Krause does not even mention attributes of an element of the
document/web page that is being linked. (App. Br. 8.) There is no
disclosure in Krause of web page element attributes for web pages to be
linked to a user’s web page, much less selecting between them to create a
label for a link for a web page to be linked.
Consequently, we are constrained by the record before us to find that
Krause does not disclose at least the disputed feature of “determining a label
based on selecting between a value of a first attribute of an element of said
document and a value of a second attribute of said element.” The Examiner
has failed to set forth a prima facie anticipation rejection. It follows that
Appellant has persuaded us to find error in the Examiner’s anticipation
rejection of Appellant’s independent claim 1.
Appellant’s dependent claims 2, 6-8, and 10 depend on claim 1.
Appellant’s independent claims 11-13 and 15-17 and dependent claim 14
(dependent on claim 13) include limitations similar scope to the disputed
limitations of claim 1. Therefore, based on the record before us, we find that
the Examiner erred in finding Krause discloses each limitation recited in
Appellant’s claims 1, 2, 6-8, and 10-17. Accordingly, we reverse the
Examiner’s anticipation rejection of these claims.
Appellant’s Dependent Claims 3-5, Rejected
Under 35 U.S.C. § 103(a)
The Examiner rejects Appellant’s dependent claims 3-5 as being
unpatentable over the combination of Krause and Vedullapalli. (Ans. 7-9.)
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Claims 3-5 depend on claim 1. For the reasons explained with respect to
claim 1 (supra), we find Krause does not disclose, teach, or suggest each
feature of these claims. Vedullapalli does not cure the deficiencies of
Krause. Therefore, based on the record before us, we find that the Examiner
erred in finding Krause and Vedullapalli would have collectively taught or
suggested each limitation recited in Appellant’s claims 3-5, and we reverse
the Examiner’s obviousness rejection of these claims.

CONCLUSIONS OF LAW
Appellant has shown that the Examiner erred in rejecting claims 1, 2,
6-8, and 10-17 under 35 U.S.C. § 102(b).
Appellant has shown that the Examiner erred in rejecting claims 3-5
under 35 U.S.C. § 103(a).

DECISION
We reverse the Examiner’s rejection of claims 1, 2, 6-8, and 10-17
under 35 U.S.C. § 102(b).
We reverse the Examiner’s rejection of claims 3-5 under 35 U.S.C.
§ 103(a).

REVERSED

Appeal 2009-005827
Application 10/833,170

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