Ex Parte Moles

Board of Patent Appeals and Interferences

Feb 22, 2007

10034394 (B.P.A.I. Feb. 22, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRYAN JEFFERY MOLES
____________

Appeal 2006-2594
Application 10/034,394
Technology Center 2100
____________

Decided: February 22, 2007
____________

Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
MAHSHID D. SAADAT, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-21. The Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

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A. INVENTION
The invention at issue on appeal transforms markup language
documents for display on wireless communications devices. (Specification
1.) Wireless communications devices such as mobile telephones and
personal digital assistants ("PDAs") provide access Internet World Wide
Web sites and enterprise intranet servers. Data retrieved therefrom include
documents created in a markup language such as a HyperText Markup
Language ("HTML") or Extensible Markup Language ("XML"). (Id. 1-2.)

Markup language documents from Internet-type servers are generally
created and formatted for display on systems having large display areas, e.g.,
personal computers or workstations. Wireless communications devices, in
contrast, usually feature small display areas incapable of displaying markup
language documents in the form in which they were intended to be
displayed. Graphic images, tables, and forms are particularly problematic to
display on wireless communications device. (Id. 2.)

Accordingly, the Appellant's conversion controller scans part of a
markup language document for tags associated with graphical images. The
controller replaces each detected image with one of a set of placeholders,
each having a label corresponding to a button. Actuation of the button
initiates display of the replaced image. The controller reuses placeholders to
replace graphical image within other parts of the markup language source
when the other parts are displayed. (Id. 4.)

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Claims 1 and 8, which are further illustrative of the invention, follow:
1. For use in a browser, a converter for adapting markup
language documents for display in small areas comprising:

a conversion controller scanning a portion of markup language
source selected for display for tags associated with graphical elements and
automatically replacing each detected graphical element within the selected
markup language source portion with one of a plurality of placeholders
having labels corresponding to a set of buttons,

wherein the plurality of placeholders are reused to replace
detected graphical elements within other portions of the markup language
source when such other portions are selected for display.

8. A communications device comprising:

a display;

an input for receiving a markup language document to be
displayed on the display; and

a conversion controller scanning a selected display portion of
source for the markup language document for tags associated with
graphical elements and automatically replacing each detected
graphical element within the selected markup language source portion
with one of a plurality of placeholders having labels corresponding to
a set of buttons,

wherein the plurality of placeholders are reused to replace
detected graphical elements within other portions of the markup
language source when such other portions are selected for display.

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B. REJECTION
Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as obvious over
Web Page Filtering and Re-Authoring for Mobile Users, The Computer
Journal, Vol. 42, No. 6, pp. 534-546, April 21, 1999 ("Bickmore") and U.S.
6,489,976 B1 ("Patil").

II. CLAIM GROUPING
"When multiple claims subject to the same ground of rejection are
argued as a group by appellant, the Board may select a single claim from the
group of claims that are argued together to decide the appeal with respect to
the group of claims as to the ground of rejection on the basis of the selected
claim alone. Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant has grouped
together shall constitute a waiver of any argument that the Board must
consider the patentability of any grouped claim separately." 37 C.F.R.
§ 41.37(c)(1)(vii) (2005).1 "A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim." Id.

Here, the Appellant argues claims 1 and 15, which are subject to the
same ground of rejection, as a group. (Br. 17.) Furthermore, he merely
points out what claims 2-7 and 16-21 recite and alleges that such limitations
are not taught by the references. (Id. 10-13, 20.) Because these allegations

1 We cite to the version of the Code of Federal Regulations in effect at the
time of the Appeal Brief.

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do not challenge the rejection of the individual claims "with any reasonable
specificity," In re Nielsen, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528
(Fed. Cir. 1987), these do not constitute arguments for the separate
patentability of these claims.2 Therefore, we select claim 1 as the sole claim
on which to decide the appeal of claims 1-7 and 15-21.

Similar to claims 2-7 and 16-21, the Appellant merely points out what
claims 9-14 recite and alleges that such limitations are not taught by the
references. Because these allegations do not challenge the rejection of the
individual claims "with any reasonable specificity," id., these allegations do
not constitute arguments for the separate patentability of these claims. 3
Therefore, we select claim 8 as the sole claim on which to decide the appeal
of claims 8-14. With these representations in mind, rather than reiterate the
positions of the Examiner or the Appellant in toto, we focus on the following
issues therebetween:
• motivation to combine Bickmore and Patil
• placeholders having labels corresponding to buttons
• controller for scanning and replacing.

III. MOTIVATION TO COMBINE BICKMORE AND PATEL
The Examiner finds that column 1, lines 55-62, of Patil would have
"cause[d] one of ordinary skill in the art to provide an alternate method of
choosing an onscreen object, which Patil does by using shortcut keys that
correspond the onscreen objects." (Answer 7.) The Appellant alleges "that

2 Assuming arguendo that they did constitute separate arguments, they fail
to show any error in the Examiner's rejections.
3 Assuming arguendo that they did constitute separate arguments, they fail
to show any error in the Examiner's rejections.
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there is no suggestion or motivation in either Bickmore or Patil to cause one
of ordinary skill in the art to undertake such a highly speculative and
selective process." (Br. 10.) Therefore, the issue is whether a motivation to
combine Bickmore and Patil exists.

"The presence or absence of a motivation to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000) (citing In re
Dembiczak, 175 F.3d 994, 1000, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)).
A suggestion to combine teachings from the prior art "may be found in
explicit or implicit teachings within the references themselves, from the
ordinary knowledge of those skilled in the art, or from the nature of the
problem to be solved." WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d
1339, 1355, 51 USPQ2d 1385, 1397 (Fed. Cir. 1999) (citing In re Rouffet,
149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998)).

Here, like the Appellant's invention, Bickmore's "Digestor system
automatically converts web-based documents designed for desktop viewing
into formats appropriate for handheld devices with small display screens,
such as Palm-PCs, PDAs and cellular phones." (Abstract, ll. 1-3.) "The
approach taken in Digestor is to provide a set of techniques that transform all
images in a page by pre-defined scaling factors (25%, 50% and 75%) and
making the reduced images hypertext links back to the originals." (P. 539.)

For its part, Patil "relates to a system and method for displaying pop-
up symbols to enable users to select accelerator keys associated with
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computer software options." (Col. 1, ll. 15-17.) More specifically, the
secondary reference "display[s] pop-up accelerator key symbols associated
with and next to option icons and that represent keys that may be selectable
by the user through use of a keyboard or other input devices to implement
the option with which the symbol is associated." (Col. 2, ll. 27-37.)

Patil explains that accelerator keys offer the advantages of "speed[ing]
the selection of certain options," (id. ll. 32-33), and "avoid[ing] the need for
users to remove their hands from a keyboard." (Id. ll. 60-61.) The
secondary reference further explains the advantage of its pop-up symbols.
To wit, the symbols improve accelerator keys by "enabl[ing] a user to select
options by using accelerator keys without requiring memorization or
requiring the user to manually check a reference guide." (Col. 2, ll. 34-36.)
We agree with the examiner's finding that these advantages would have
provided a motivation to combine Bickmore and Patil.

IV. PLACEHOLDERS HAVING LABELS
CORRESPONDING TO BUTTONS
The Examiner finds, "Patil is meant to teach labels that correspond to
buttons, not placeholders. Bickmore is relied upon to teach placeholders. .
. ." (Answer 6.) The Appellant argues, "At best, Patil's secondary pop-up
symbols are supplemental display elements - appearing together with, not in
place of, the graphical element (e.g., icon) with which they are associated.
They provide a user with an indication of a multi-key keystroke that may be
utilized as an alternative actuating the graphical element itself (e.g.,
'clicking' the icon)." (Br. 9.) Therefore, the issue is whether the
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combination of references would have suggested replacing each graphical
image with a placeholder having a label corresponding to a button.

In addressing the issue, the Board conducts a two-step analysis. First,
we construe the representative claim at issue to determine its scope. Second,
we determine whether the construed claim would have been obvious.

A. CLAIM CONSTRUCTION
"Analysis begins with a key legal question — what is the invention
claimed?" Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567,
1 USPQ2d 1593, 1597 (Fed. Cir. 1987). In answering the question,
"the PTO gives claims their 'broadest reasonable interpretation.'" In re
Bigio, 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1211 (Fed. Cir. 2004)
(quoting In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1668 (Fed.
Cir. 2000)). "Moreover, limitations are not to be read into the claims from
the specification." In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d
1057, 1059 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989)).

Here, claim 1 recites in pertinent part the following limitations:
"replacing each detected graphical element within the selected markup
language source portion with one of a plurality of placeholders
having labels corresponding to a set of buttons. . ." Giving the
representative claim the broadest, reasonable construction, the limitations
require replacing each graphical image with a placeholder having a label
corresponding to a button.
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B. OBVIOUSNESS DETERMINATION
"Having determined what subject matter is being claimed, the next
inquiry is whether the subject matter would have been obvious." Ex Parte
Massingill, No. 2003-0506, 2004 WL 1646421, at *3 (B.P.A.I 2004). "Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references." In re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380
(Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981)). In determining obviousness, furthermore, a reference "must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole." Id., Id.

Here, the rejection is based on the combined teachings of Bickmore
and Patil. Because the primary reference "transform[s] all images in a page
by pre-defined scaling factors . . . and mak[es] the reduced images hypertext
links back to the originals," (p. 539), we find that Bickmore replaces each
graphical image with a placeholder. In fact, the Appellant admits that "such
'thumbnail' in-page hyperlinks may indeed be placeholders. . . ." (Br. 7.)

As aforementioned, Patil disclose that its combination of accelerator
keys and pop-up symbols speeds the selection of options without requiring
removal of hands from a keyboard, memorization, or manually checking a
reference guide. We further find that such advantages would have provided
a motivation to employ accelerator keys and pop-up accelerator key symbols
with the thumbnail in-page hyperlinks. When the teachings were so
combined, we find that the combination would have suggested replacing
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each graphical image with a placeholder having a label corresponding to a
button. Therefore, we affirm the rejection of claim 1 and of claims 2-7 and
15-21, which fall therewith.

V. CONTROLLER FOR SCANNING AND REPLACING
The examiner makes the following finding.
Bickmore discloses a converter for automatically adapting
markup language documents for display in small areas
comprising: a conversion controller scanning a portion of
markup language source selected for display for tags associated
with graphical elements and replacing each detected graphical
element (Column 4 lines 60-63, Column 5 lines 1-2) within the
selected markup language source portion with one of a plurality
of placeholders (Column 11 lines 23-26).

(Answer 3.) Observing that "[t]his element requires a controller that both
scans a portion of source for tags and automatically replaces each detected
graphical element with one of the plurality of placeholders," (Br. 14), the
Appellant alleges, "Nothing in Bickmore or Patil, or any combination of
them, appears to teach this element as described with relation to all other
elements of this claim." (Id.) Therefore, the issue is whether the
combination of references would have suggested a controller that scans a
document for tags associated with graphical images and replaces each
graphical image with a placeholder having a label corresponding to a button.

A. CLAIM CONSTRUCTION
Claim 8 recites in pertinent part the following limitations:
"a conversion controller scanning a selected display portion of source [sic]
for the markup language document for tags associated with graphical
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elements and automatically replacing each detected graphical element within
the selected markup language source portion with one of a plurality of
placeholders having labels corresponding to a set of buttons. . . ." Giving the
representative claims the broadest, reasonable construction, the limitations
require a controller that scans a document for tags associated with graphical
images and replaces each graphical image with a placeholder having a label
corresponding to a button.

B. OBVIOUSNESS DETERMINATION
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently. . . ." In re Zurko, 258 F.3d 1379, 1383, 59 USPQ2d 1693, 1696
(Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 148
USPQ 459, 467 (1966); In re Dembiczak, 175 F.3d 994, 998, 50 USPQ2d
1614, 1616 (Fed. Cir. 1999); In re Napier, 55 F.3d 610, 613, 34 USPQ2d
1782, 1784 (Fed. Cir. 1995)). "'A prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have
suggested the claimed subject matter to a person of ordinary skill in the art.'"
In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)
(quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976)).

Here, as mentioned regarding the prior issue, we have found that the
combination of Bickmore and Patil would have suggested replacing each
graphical image with a placeholder having a label corresponding to a button.
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Bickmore also discloses that its "Digestor performs a depth-first search of
the document transformation space, using many heuristics that describe
preconditions for transformations and combinations of transformations."
(P. 539.) "Each state in the transformation space represents a version of the
document, with the initial state representing the original 'as-authored'
document (see Figure 6)." (Id.) We also find that the Digestor constitutes a
controller and that its searching constitutes scanning a document for tags
associated with graphical images. Therefore, we affirm the rejection of
claim 8 and of claims 9-14, which fall therewith.

VI. CONCLUSION
In summary, the rejection of claims 1-21 under § 103(a) is affirmed.

"Any arguments or authorities not included in the brief or a reply brief
filed pursuant to [37 C.F.R.] § 41.41 will be refused consideration by the
Board, unless good cause is shown." 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, our affirmance is based only on the arguments made in the
brief. Any arguments or authorities omitted therefrom are neither before us
nor at issue but are considered waived. Cf. In re Watts, 354 F.3d 1362,
1367, 69 USPQ2d 1453, 1457 (Fed. Cir. 2004) ("[I]t is important that the
applicant challenging a decision not be permitted to raise arguments on
appeal that were not presented to the Board.") No time for taking any action
connected with this appeal may be extended under 37 C.F.R.
§ 1.136(a)(1)(iv).

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AFFIRMED

kis

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P. O. BOX 800889
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