Ex Parte Petri

Patent Trial and Appeal Board

Feb 29, 2016

11875204 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111875,204 10/19/2007 John Edward Petri
46296 7590 03/02/2016
MARTIN & ASSOCIATES, LLC
P.O. BOX548
CARTHAGE, MO 64836-0548
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
ROC920070161US1 3946
EXAMINER
HASTY, NICHOLAS
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
03/02/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
derekm@ideaprotect.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN EDWARD PETRI
Appeal2014-004771
Application 11/875,2041
Technology Center 2100
Before CAROLYN D. THOMAS, JEFFREYS. SMITH, and
TERRENCE W. MCMILLIN, Administrative Patent Judges.
MCMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the Examiner's final
rejection of claims 1, 3-5, 7, and 10-19. App. Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to Appellant, the real party in interest is International Business
Machines Corporation (App. Br. 1 ).
Appeal2014-004771
Application 11/875,204
REJECTIONS ON APPEAL
Claims 1, 3, 7, 10, 14--15, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Manico (US 2008/0155422 Al, pub.
June 26, 2008), Bai (US 2007 /0296993 A 1, pub. Dec. 27, 2007), and Chalfin
(US 8,046,698 Bl, iss. Oct. 25, 2011). Final Act. 3-12.
Claims 4--5, 11-13, 16, and 17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Manico, Bai, Chalfin, and Giannetti
(US 2007/0276856 Al, pub. Nov. 29, 2007). Final Act. 13-16.
THE CLAIMED INVENTION
The present invention "generally relates to content management
systems, and more specifically relates to rendering of content in a content
management system." Spec. i-f 2. Independent claim 1 is directed to an
apparatus; independent claim 7 is directed to a computer-implemented
method; independent claim 14 is directed to a computer-implemented
method; and independent claim 15 is directed to an article of manufacture.
App. Br. 16, 18, 20, and 21.
Claim 1 recites:
1. An apparatus comprising:
at least one processor;
a memory coupled to the at least one processor;
a repository residing in the memory that includes a
plurality of objects;
a plurality of rendering rules residing in the memory that
determine how elements in the plurality of objects are rendered;
a content management system residing in the memory and
executed by the at least one processor, the content management
system comprising:
a rendering mechanism that inserts a plurality of rendering
markers in a plurality of elements in a selected object in the
2
Appeal2014-004771
Application 11/875,204
repository that identify a corresponding rendering action for each
marked element, receives a desired rendering action for the
selected object in the repository, determines from the rendering
rules and the plurality of rendering markers which of the plurality
of elements in the selected object correspond to the desired
rendering action, determines which one of a plurality of
applications corresponds to the desired rendering action, and
renders at least one element in the selected object that
corresponds to the desired rendering action in the one application
corresponding to the desired rendering action, wherein the
rendering mechanism invokes a plurality of applications that are
active at the same time to render multiple elements in the selected
object that correspond to different rendering actions according to
the plurality of rendering markers in the selected object.
Claim 15 recites:
15. An article of manufacture comprising:
(A) a content management system comprising a rendering
mechanism that inserts a plurality of rendering markers in a
plurality of elements in a selected object in the repository that
identify a corresponding rendering action for each marked
element, receives a desired rendering action for the selected
object in a repository, determines from a plurality of rendering
rules and the plurality of rendering markers which of the plurality
of elements in the selected object correspond to the desired
rendering action, determines which one of a plurality of
applications corresponds to the desired rendering action, and
renders at least one element in the selected object that
corresponds to the desired rendering action in the one application
corresponding to the desired rendering action, wherein the
rendering mechanism invokes a plurality of applications that are
active at the same time to render multiple elements in the selected
object that correspond to different rendering actions according to
the plurality of rendering markers in the selected object; and
(B) non-transitory computer-readable recordable media
bearing the content management system.
3
Appeal2014-004771
Application 11/875,204
ANALYSIS
Claim 1
Appellant contends Bai does not "teach or suggest a plurality of
rendering markers in a plurality of elements that identify a corresponding
rendering action for each marked element" or "determin[ing] from the
rendering rules and the plurality of rendering markers which of the plurality
of elements in the selected object correspond to the desired rendering
action," as required by claim 1. App. Br. 7-8. Specifically, Appellant
argues "Bai teaches a single tag that corresponds to the entire document"
and that "does not determine which elements in the document are rendered."
App. Br. 8. The Examiner responds that Bai teaches "rendering marker (tag)
inserted into elements (image) determine how to render element [sic]." Ans.
2.
As cited by the Examiner, Paragraph 28 of Bai discloses:
[0028] In one embodiment, image processing module 36
renders the image represented by the image file from the color
information encoded in the image file. As used herein, the term
"render" refers to the unpacking of image information from the
image file to recreate the image represented by the image file.
Rendering may occur to enable the image to be output (e.g., as a
printed copy, for display on a screen, etc.), or rendering may
occur for the purpose of analyzing the image and/or color
information encoded in the image file. As was mentioned above,
in one embodiment, the tag has been inserted into the image file
such that it is the first object that is rendered or processed by
image processing module 3 6. In other embodiments, the tag is
inserted such that it is rendered or processed in another
predetermined "spot" in the rendering of the image file (e.g., last,
etc.). However, placing the tag in the image file to be rendered
or processed first may facilitate the use of the information
conveyed by the tag in rendering/processing other color
information encoded in the image file. As the tag is rendered or
4
Appeal2014-004771
Application 11/875,204
processed, tag module 38 detects the presence of the tag in the
rendered information, and determines the information about the
generation of the image file that is conveyed by the tag. Tag
module 38 then provides this information to image processing
module 36. Image processing module 36 generates instructions
for output device 20 to output a copy of the image based on the
rendered color information that represents the image, and the
information about the generation of the image file determined by
tag module 38.
Bai i-f 28 (emphasis added).
In other words, Bai teaches a tag, or marker, inserted to an image file
to convey rendering information for the image file. Contrary to the
Examiner's findings, Bai's inclusion of rendering information in the form of
a tag does not teach or suggest "identify[ing] a corresponding rendering
action for each marked element" or "determin[ing] from the rendering rules
and the plurality of rendering markers which of the plurality of elements in
the selected object correspond to the desired rendering action," as required
by claim 1.
Appellant further contends Chalfin does not teach or suggest "wherein
the rendering mechanism invokes a plurality of applications that are active at
the same time to render multiple elements in the selected object that
correspond to different rendering actions according to the plurality of
rendering markers in the selected object," as required by claim 1. App. Br.
8-9. Specifically, Appellant argues Chalfin does not "teach or suggest the
multiple applications running concurrently are operating on the same
object," and that the "teachings of Chalfin all deal with multiple applications
that may be running concurrently but that each operates independently of
each other" and "concurrently-running applications [that] support multiple
users with simultaneous access of different server 12 resources." App. Br.
5
Appeal2014-004771
Application 11/875,204
9. The Examiner responds that Chalfin teaches "render[ing] multiple
applications concurrently." Ans. 3.
As cited by the Examiner, Chalfin discloses:
Visual server system 10 supports application transparent
image based remote rendering by virtualizing displays using the
X protocol, windows, and visuals and GLX rendering contexts.
Visual server system 10 diverts OpenGL commands from a GLX
application stream to the hardware accelerator of server 12 while
letting the X protocol transport all user input, window, and
widget information directly to remote clients 14. Images
rendered on server 12 are captured, compressed, and transported
to client 14. Client 14 decompresses the images and embeds them
in the appropriate windows maintained by the X protocol. Visual
server system 10 relies on the X protocol and GLX support on
both server and client 14. Visual server system 10 enables
unmodified GLX based applications to run on a remote system
yet appears as if they were running locally. This includes
properly rendering any number of OpenGL contexts and
windows and fully supporting all user input, widgets, and user
interface data.
Chalfin, col. 3 11. 32--48 (emphasis added).
In other words, Chalfin teaches rendering user input, widgets, and
user interface data in contexts and windows, and also running applications
on a remote system with the appearance of running locally. Contrary to the
Examiner's findings, Chalfin's inclusion rendering input and interface data
in various contexts and windows, and separately the running of applications
to appear as though they are running locally, do not teach or suggest
"invok[ing] a plurality of applications that are active at the same time to
render multiple elements in the selected object that correspond to different
rendering actions according to the plurality of rendering markers in the
selected object," as required by claim 1.
Therefore, we do not sustain the Examiner's rejection of claim 1.
6
Appeal2014-004771
Application 11/875,204
Independent claims 7 and 14 contain limitations analogous to those of claim
1. Claims 3-5 and 10-13 are dependent on claims 1 and 7. We do not
sustain the rejections of these claims for the reasons stated above with regard
to claim 1.
Claim 15
Appellant contends the combination of Manico, Bail, and Chalfin
does not teach or suggest
a rendering mechanism that inserts a plurality of rendering
markers in a plurality of elements in a selected object in the
repository that identify a corresponding rendering action for each
marked element, receives a desired rendering action for the
selected object in a repository, determines from a plurality of
rendering rules and the plurality of rendering markers which of
the plurality of elements in the selected object correspond to the
desired rendering action, determines which one of a plurality of
applications corresponds to the desired rendering action, and
renders at least one element in the selected object that
corresponds to the desired rendering action in the one application
corresponding to the desired rendering action, wherein the
rendering mechanism invokes a plurality of applications that are
active at the same time to render multiple elements in the selected
object that correspond to different rendering actions according to
the plurality of rendering markers in the selected object,
as required by claim 15. App. Br. 7.
Based upon our review of the record, we find Appellant's principal
argument urging patentability is predicated on non-functional descriptive
material i.e., the type or content of the claimed
content management system comprising a rendering mechanism
that inserts a plurality of rendering markers . .. that identifY a
corresponding rendering action . .. receives a desired rendering
action ... determines from a plurality of rendering rules and the
plurality of render markers which. .. correspond to the desired
7
Appeal2014-004771
Application 11/875,204
renaerzng action, determines wnzcn one of a plurality of
applications corresponds to the desired rendering action, and
renders at least one element in the selected object that
corresponds to the desired rendering action in the one
application corresponding to the desired rendering action,
wherein the rendering mechanism invokes a plurality of
applications that are active at the same time to render multiple
elements in the selected object that correspond to different
rendering actions according to the plurality of rendering
markers in the selected object.
App. Br. 7-9, 21 (emphasis added).
Specifically, Appellant does not argue that the combination of
Manico, Bai, and Chalfin does not teach "[a]n article of manufacture
comprising ... (B) non-transitory computer-readable recordable media
bearing the content management system," as recited in claim 15. Id. Rather,
Appellant argues that the combination of Manico, Bai, and Chalfin does not
teach the "rendering markers" as claimed, and the rendering of multiple
elements corresponding to the rendering actions according to the rendering
markers, which are rendered by the rendering mechanism of the content
management system. Id. We find that the combination of Manico, Bai, and
Chalfin teaches data stored and rendered, but not the rendering markers,
rendering actions, rendering rules, and rendered elements as claimed.
Therefore, the combination of Manico, Bai, and Chalfin does not explicitly
teach the data (non-functional descriptive material) in the form of rendering
markers, rendering actions, rendering rules, and rendered elements.
Given the support in Appellant's Specification (describing elements in
an object as "a mix of different types of data" in a "given document" (Spec.
i-f 5), and rendering rules as containing information (Spec. i-f 34), and
rendering markers as corresponding to the defined rendering rules (Spec. i-f
8
Appeal2014-004771
Application 11/875,204
4 7) ), we conclude that the claimed rendering markers, rendering actions,
rendering rules, and rendered elements cover non-functional descriptive
material. Non-functional descriptive material refers to data content that does
not exhibit a functional interrelationship with the substrate and does not
affect the way the computing processes are performed. The informational
content of non-functional descriptive material is not entitled to weight in the
patentability analysis. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
("Lowry does not claim merely the information content of a memory
.... Nor does he seek to patent the content of information resident in a
database"). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI
2008) (precedential); Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005)
(informative) (aff'd, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36)); Ex
parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), aff'd,
191 Fed. Appx. 959 (Fed. Cir. 2006).
Our reviewing court has held that non-functional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms ofpatentability). King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) ("[T]he relevant question is whether 'there exists any
new and unobvious functional relationship between the printed matter and
the substrate.'") (Internal citations omitted).
Here, the informational content of the data claimed rendering
markers, rendering actions, rendering rules, and rendered elements
9
Appeal2014-004771
Application 11/875,204
represents non-functional descriptive material that is entitled to no weight in
the patentability analysis. In particular, the claimed rendering markers,
rendering actions, rendering rules, and rendered elements are not
functionally related, and impart no functionality, to the claimed article of
manufacture or its non-transitory computer-readable recordable media
bearing the content management system.
We agree with the Examiner that the combination of Manico, Bai, and
Chalfin teaches the limitations of the claim given patentable weight (i.e., the
"article of manufacture comprising ... non-transitory computer-readable
recordable media bearing the content management system"). See Final Act.
10-11. Accordingly, we sustain the Examiner's rejection of claim 15, as
well as the rejections of dependent claims 16-19.
DECISION
The rejections of claims 1, 3-5, 7, and 10-14 are reversed.
The rejections of claims 15-19 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
10