Ex Parte Nickerson et al

Board of Patent Appeals and Interferences

Feb 21, 2012

11135045 - (D) (B.P.A.I. Feb. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAND B. NICKERSON and MARK A. TRESCHL
____________

Appeal 2009-013854
Application 11/135,045
Technology Center 2100
____________

Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE,
and BRUCE R. WINSOR, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-6, 8-17, and 19-22, which constitute all the claims pending in this
application. Claims 7 and 18 are cancelled. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b) (2011).

STATEMENT OF THE CASE
Claim 1, which is illustrative of the invention, reads as follows
(argued limitations emphasized):
1. A system for measuring subjective user reaction
concerning a particular document, the system comprising:
a first icon incorporated into a particular document, the
first icon having been incorporated into the document in
connection with creation of the document and remaining with
the document over a publication period, the first icon becoming
viewable at least partially on or near the document independent
of input from a user subsequent to the user accessing the
particular document, the first icon soliciting a subjective user
reaction to the particular document from the user independent
of input from the user subsequent to the user accessing the
particular document, the first icon operable to receive user input
indicating a desire to provide a subjective user reaction to the
particular document, the user input causing a second icon to
become viewable at least partially on or near the particular
document, the second icon providing the user an opportunity to
provide a subjective user reaction to the particular document;
and
one or more tangible computer-readable media
comprising software associated with the second icon and, when
executed by a computer, operable to:
receive the subjective user reaction to the
particular document; and
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direct the subjective user reaction to a
predetermined destination for reporting to an owner of the
document.
The Examiner relies on the following prior art in rejecting the claims:
Yien US 5,568,489 Oct. 22, 1996
Nickerson US 6,606,581 B1 Aug. 12, 2003
Johnson US 2004/0049571 A1 Mar. 11, 2004
Lehavi US 2005/0108020 A1 May 19, 2005
Official Notice taken by the Examiner
Claims 1-4, 8, 12-15, and 19 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Nickerson.1
Claims 5 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nickerson in view of Yien.
Claims 6 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nickerson in view of Official Notice taken by the
Examiner.
Claims 9, 10, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nickerson in view of Johnson.
Claims 11 and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nickerson in view of Lehavi.
Rather than repeat the arguments here, we make reference to the
Briefs ((Amended) App. Br. filed Feb. 18, 2009; Reply Br. filed July 14,
2009)2 and the Answer (Ans. mailed May 14, 2009) for the respective
positions of Appellants and the Examiner. Only those arguments actually

1 The Examiner has withdrawn a rejection of claims 1-6 and 8-11 under 35
U.S.C. § 101 for being directed to non-statutory subject matter (Ans. 10; cf.
Fin. Rej. 2-3).
2 The Appeal Brief filed Dec. 9, 2008, has not been considered as it is
deemed to have been superseded and replaced by the Amended Appeal Brief
filed Feb. 18, 2009.
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made by Appellants have been considered in this decision. Arguments that
Appellants did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).

ISSUES
Appellants have presented their arguments with reference to claim 1.
Accordingly, our analysis will refer to claim 1 as the representative claim,
pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The pivotal issues presented by Appellants’ contentions are as
follows:
Does Nickerson disclose “a first icon incorporated into a particular
document,” as recited in claim 1? (See App. Br. 32.)
Does Nickerson disclose “[the] first icon incorporated into [the]
particular document . . . in connection with creation of the document,” as
recited in claim 1? (See App. Br. 32; Reply Br. 2.)
Does Nickerson disclose “[the] first icon incorporated into [the]
particular document . . . remaining with the document over a publication
period,” as recited in claim 1? (See App. Br. 32; Reply Br. 3.)

ANALYSIS
Appellants contend that “[i]ndependent Claim 1 specifically recites a
first icon incorporated into a particular document, whereas Nickerson
discloses incorporating an icon into a particular web page.” (App. Br. 32.)
In other words, Appellants contend that a “web page” is not a “document.”
To a person of ordinary skill in the art, a document is “any self-contained
piece of work created with an application program,” MICROSOFT COMPUTER
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DICTIONARY 171 (5th ed. 2002), which encompasses a web page. We also
note that, as pointed out by the Examiner (Ans. 3, 12 ), Nickerson discloses
incorporating the tool in files, documents, formatted information, e-mail
messages, advertisements, Graphic Interface Format files, and e-mail
attachments (Nickerson col. 4, ll. 16-21; col. 8, ll. 16-22, 24-28), which are
also encompassed by “document.” We find that Nickerson discloses “a first
icon incorporated into a particular document,” as recited in claim 1.
Appellants further contend “independent Claim 1 specifically recites
the first icon having been incorporated into the document in connection
with creation of the document, whereas Nickerson discloses incorporating
an icon into a particular web page, without any reference to the creation of
the web page.” (App. Br. 32; see also Reply Br. 2.) However, as pointed
out by the Examiner (Ans. 12), Nickerson expressly discloses that “the tool
[i.e., icon] might be incorporated into [the] page [i.e., document] as [the]
page is constructed [i.e., created]” (Nickerson col. 8, ll. 9-10) (reference
numbers omitted). We find that Nickerson discloses “[the] first icon
incorporated into [the] particular document . . . in connection with creation
of the document,” as recited in claim 1.
Appellants additionally argue as follows:
Nickerson does not disclose the tool downloaded and installed
by the user remaining with a document over a publication
period, as independent Claims 1 and 12 recite. Instead, the tool
downloaded and installed by the user is installed into and
remains with a web browser, not a document, as independent
Claims 1 and 12 recite.
(Reply Br. 3 (emphases added) (emphases in original omitted).) We agree
with Appellants. The portions of Nickerson relied on by the Examiner (Ans.
3, 11) to disclose the first icon remaining with the document over the
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publication period relates to an alternative embodiment of Nickerson’s
disclosure in which Nickerson’s tool is incorporated into a web browser
rather than a document (see Nickerson col. 8, ll. 33-43). In an anticipation
rejection, “it is not enough that the prior art reference . . . includes multiple,
distinct teachings that [an ordinary] artisan might somehow combine to
achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the reference must “‘clearly and
unequivocally disclose the claimed [invention] or direct those skilled in the
art to the [invention] without any need for picking, choosing, and combining
various disclosures not directly related to each other by the teachings of the
cited reference.’” Id. (quoting In re Arkley, 455 F.2d 586, 587 (CCPA 1972)
(brackets in original)). Thus, while “[s]uch picking and choosing may be
entirely proper in the making of a 103, obviousness rejection, . . . it has no
place in the making of a 102, anticipation rejection.” Arkley, 455 F.2d at
587-88.
Accordingly, we conclude that the Examiner erred by combining
features related to two different embodiments disclosed by Nickerson.
Accordingly, we will not sustain the rejection under 35 U.S.C. § 102(b) of
claim 1 or of claims 2-4, 8, 12-15, and 19, which were rejected on the same
ground of rejection.
Claims 5, 6, 9-11, 16, 17, and 20-22 were rejected as unpatentable
under 35 U.S.C. § 103(a). Appellants’ Briefs do not contain any arguments
contesting the Examiner’s findings regarding these grounds of rejection.
Accordingly, we will sustain the rejections of claims 5, 6, 9-11, 16, 17, and
20-22 as unpatentable under 35 U.S.C. § 103(a).

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NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claims 1-4, 8, 12-15, and 19 are rejected on a new ground of rejection
under 35 U.S.C. § 103(a) as unpatentable over Nickerson as applied by the
Examiner. Combination of the features of Nickerson’s embodiments is
merely a combination of familiar elements according to known methods that
does no more than yield predictable results, KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007), and is a predictable variation that can be
implemented by a person of ordinary skill , id. at 417. For further emphasis
we note that we construe the phrases “incorporated into the document” and
“remaining with the document” to describe the code that generates the icon.
We do not construe it to require that the icon be continuously viewable (see
Spec. Fig. 13B, ref. 334). We note that Nickerson discloses that the
“MEASUREMENT TOOL CAUSES [THE] ICON TO BECOME
UNVIEWABLE ON THE PARTICULAR PAGE DURING REMAINDER
OF [THE] SESSION” (Nickerson Fig. 11B, ref. 334). We find that the
person of ordinary skill in the art would infer from Nickerson’s disclosure of
rendering the icon un-viewable (as distinct from deleting the icon) that the
icon remains with the documents for as long as the document is available for
use, i.e., throughout a publication period. “[T]he [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
550 U.S. at 418.

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DECISION
The decision of the Examiner to reject claims 5, 6, 9-11, 16, 17, and
20-22 as unpatentable under 35 U.S.C. § 103(a) is affirmed.
The decision of the Examiner to reject claims 1-4, 8, 12-15, and 19 as
anticipated under 35 U.S.C. § 102(b) is reversed.
We enter a new ground of rejection for claims 1-4, 8, 12-15, and 19 as
unpatentable under 35 U.S.C. § 103(a).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2011). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
37 C.F.R. § 41.50(b).
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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