Ex Parte Reynar et al

Board of Patent Appeals and Interferences

Mar 24, 2010

10184298 (B.P.A.I. Mar. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JEFFREY C. REYNAR, MARCIN SAWICKI, BRIAN JONES,
ROBERT LITTLE, CHRISTOPHER H. PRATLEY, and PAUL BROMAN
____________________

Appeal 2009-004699
Application 10/184,298
Technology Center 2100
____________________

Decided: March 24, 2010
____________________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and JAMES
R. HUGHES, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-8, 11-21, and 24-27. Claims 9, 10, 22, and 23 have
been canceled (App. Br. 3). We have jurisdiction under 35 U.S.C. § 6(b)
(2008).
We affirm.
Introduction
According to Appellants, the invention relates to a system and method
for “associating actions with semantic labels in an electronic document”
(Spec. 1, ll. 5-6). More specifically, an action dynamic link library (DLL)
manages action plug-ins which execute the actions (Spec. 7, ll. 13-14). “The
action plug-ins provide possible actions to be presented to a user based upon
the type label associated with the string or other content” (id. at ll. 16-17).
The action DLL determines what type label the semantic category includes,
and cross-references the type label in the type-action database with a list of
actions to determine what actions to present to the user (id. at ll. 17-20).
After the user chooses an action, the action DLL manages the action plug-ins
(id. at 25-26). It then passes the necessary information between the action
plug-ins and the application program module to enable the action plug-in to
execute the desired action (id. at ll. 26-28).
Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. For an electronic system for creating and editing an
electronic document, a method for associating actions with
markup language tags in the electronic document created in an
application program module, the method comprising:

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annotating sections of the electronic document with a
plurality of the markup language tags, the markup language
tags being associated with at least one of a plurality of actions
and corresponding to at least one semantic category, wherein
the sections include at least one from a set of: a text string and a
graphical object, and wherein the plurality of markup language
tags are a part of the electronic document;

receiving the plurality of markup language tags in an
action dynamic link library;

transmitting the plurality of markup language tags to a
plurality of action plug-ins; and

determining, in the action plug-ins, the plurality of
actions based on the markup language tags without recognizing
content contained in the annotated sections of the electronic
document.

Prior Art
Pandit 5,859,636 Jan. 12, 1999
Gandel 6,167,568 Dec. 26, 2000
Park 6,295,061 B1 Sep. 25, 2001
McInnes 2003/0101416 A1 May 29, 2003

Rejections
Claims 1-4, 13-17, and 25-27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Pandit, McInnes, and Park.
Claims 5-8, 11, and 18-21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pandit and McInnes.
Claims 12 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pandit, McInnes, and Gandel.

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GROUPING OF CLAIMS
Appellants argue the patentability of claims 1-8, 11-21, and 24-27 on
the basis of independent claim 1 (App. Br. 13-21). We select independent
claim 1 as the representative claim. We therefore treat claims 2-8, 11-21 and
24-27 as standing or falling with representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2008).

ISSUE 1
35 U.S.C. § 103(a): claims 1-4
Pandit and Teaching Away
Appellants assert their invention is patentable over the combination of
Pandit, McInnes, and Park (see App. Br. 13). Specifically, Appellants
contend that Pandit teaches away from the claimed invention and, as a result,
there is insufficient rationale to combine Pandit with McInnes. (id. at 13-
15). In particular, Appellants argue that Pandit discloses that subroutines of
a library (1) recognize a class or type of text data; (2) identify operations that
can be performed; and (3) perform the identified operation (id. at 13).
Further, Appellants argue that “according to Pandit each string of text in a
document would need to be re-recognized before a relevant operation can be
performed since markup language tags that are part of the electronic
document are not disclosed” (id.). Appellants therefore contend that Pandit
teaches away from the present invention “where relevant actions are
determined based on markup language tags associated with section(s) of a
document without recognizing content” (id.) (emphasis omitted).
The Examiner finds “there is sufficient support and motivation to
combine the teachings of Pandit and McInnes to teach using markup
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language tags to identify certain classes or types of text in a document and
using those tags to identify a specific type of text for an action” (Ans. 20).
The Examiner further finds that “the first teaching of Pandit for the
recognition of text in a word processing document may be accomplished
using the XML identifiers of McInnes in order to increase the speed with
which the text is identified” (id. at 21). Further, the Examiner finds that
“[o]nce the text has been identified as belonging to a predetermined class, an
operation relevant to the class may be performed” (id.).
Graphical Object
Further, Appellants argue Pandit does not mention a graphic object
(App. Br. 13).
The Examiner finds that “the claim does not require a graphical object
if a text string can be shown” (Ans. 21). Further, the Examiner finds Pandit
and McInnes teach a word processing document containing text (id.).
Markup Language Tags
Appellants allege that Pandit “fails to suggest markup language tags
associated with actions or corresponding to semantic categories, the tags
being part of the document, or transmitting tags to action plug-ins for
determination of actions” (App. Br. 14). Further, Appellants contend that
the XML identifiers of McInnes are not markup language tags as claimed
(id.). Appellants contend (1) the XML identifiers of McInnes are content
identifiers placed between start and finish tags; (2) the functionality of the
tags of McInnes is limited to indicating a beginning and an end of the XML
identifier; and (3) the XML identifiers and tags of McInnes “are not
associated with actions corresponding to semantic categories, where the
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actions are executed by action plug-ins and determined by an action dynamic
link library based on the markup language tags” (id.).
The Examiner finds the combination of Pandit and McInnes teaches
markup language tags associated with semantic categories (Ans. 21).
Further, the Examiner finds (1) the tags in McInnes are used to create a
document; (2) “these tags are associated with categories, such as
CompanyName and Image;” and (3) “these categories are used a identifiers
to perform an action such as determining a certain size or format of the
content” (id.).
Further, the Examiner finds the combination of Pandit, McInnes, and
Park teaches that “the actions are executed by action plug-ins and
determined by an action dynamic link library based on the markup language
tags” (Ans. 22). The Examiner finds that “[a]lthough Pandit and McInnes
teach use of a dynamic link library, Pandit and Mclnnes do not specifically
mention an action plug-in” (id.). However, the Examiner finds “Park
teaches using markup language tags with a DLL for utilizing the functions
found in plug[-]ins in order to allow for a complicated computation to be
processed in real-time” (id.).
The Examiner concludes that “[s]ince Pandit and McInnes teach using
XML tags to identify semantic categories of text and using dynamic linked
libraries to determined [sic] the operations performed by the library on the
recognized text, … it would have been obvious to one of ordinary skill in the
art at the time the invention was made to use the combination of DLL and
plug[-]ins, as taught by Park, with the markup language tags” (id. at 23).
The Examiner finds “[t]his would allow a complicated computation, such as
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providing a specific menu bar based on corresponding text, to be processed
in real-time” (id.).
Determination of Actions Without Recognizing Content
Appellants argue McInnes fails to disclose “transmitting tags to action
plug-ins for determination of actions without recognizing content contained
in the annotated sections” (App. Br. 14).
The Examiner finds that McInnes teaches the use of XML tags to
identify specific information within a document (Ans. 14). Further, the
Examiner finds the combination of Pandit, McInnes and Park teaches or
suggests the above-argued limitation, “[s]ince the recognition of a class or
type of text data is done using XML tags which are then used to determine
actions, content contained in the annotated sections need not be recognized
when determining the actions” (id. at 23).
Motivation to Combine Pandit, McInnes, and Park
Further, Appellants contend the Examiner relies on “Park as curing
the deficiency of Pandit and McInnes as teaching determining actions based
on markup language tags associated with section of a document without
recognizing the section each time” (App. Br. 15). Appellants contend (1)
“Park merely discloses Dynamic Link Libraries (DLLs) and plug-in
modules, and fails to discuss use of markup language tags in the above
described context[,]” and (2) as such, there is no motivation to combine Park
with Pandit and McInnes because Park “does not cure the fundamental
problem with the rejection based on the applied references” (id. at 15-16).
Further, Appellants argue that even if motivation to combine Park
with Pandit and McInnes is found, (1) Park does not cure the deficiency of
Pandit and McInnes and (2) “the proposed combination would neither
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address nor solve the determination of actions based on tags associated with
sections of a document without recognizing the sections each time” (id. at
16).
The Examiner finds (1) “Park teaches the explicit use of DLL and
plug[-]ins with markup language to allow a complicated computation to be
processed in real-time,” and (2)
[s]ince Pandit and McInnes teach using XML tags to identify
semantic categories of text and using dynamic linked libraries
to determined the operations performed by the library on the
recognized text, as discussed above, it would have been obvious
to one of ordinary skill in the art at the time the invention was
made to use the combination of DLL and plugins, as taught by
Park to gain this advantage

(Ans. 23-24).
Issue 1a: Have Appellants shown the Examiner erred in finding the
prior art teaches or suggests the disputed limitations of representative claim
1?
Issue 1b: Have Appellants shown the Examiner erred in finding
sufficient rationale to combine Pandit, McInnes and Park?

FINDINGS OF FACT (FF)
We find as follows:
Appellants’ Invention
(1) “An action is a user-initiated function applied to a typed string
or other content such as images, photographs, or drawings” (Spec. 7, ll. 3-4).
Pandit Reference
(2) Pandit allows “a user to intuitively exploit the presence of
certain classes or types of text in any document by transforming the text into
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an interface to other functions or operations” (col. 1, ll. 45-48). “The
invention selectively recognizes text and performs relevant operations based
on the recognition” (col. 2, ll. 3-4).
(3) Figure 1(c) illustrates an email, having text written thereon,
associated with an email address 14 (see Fig. 1(c)). Figure 1(d) illustrates
the email having an email menu 19 (see Fig. 1(d)).
Park Reference
(4) Park provides:
Web browsers are beginning to provide many flexible and
powerful functions. These functions emerged through
technologies such as “plug-ins”, “script languages”, “virtual
machines” etc. Such functions can be utilized by simply
including the script language in the HTML page or by
providing a separate application in the form of a dynamic linked
library (DLL). Moreover, both techniques can be used together
to provide better service than most WEB browsers. For
example, the combination of techniques can allow a
complicated computation to be processed in real-time and can
also make it possible to display an intricate animation sequence.
The combination of techniques further makes it possible to
create a new database or connect to a preexisting database to be
subsequently utilized on the WWW.

(Col. 5, l. 59 - col. 6, l. 6).
McInnes Reference
(5) McInnes provides:
XML files consist of a hierarchical structure of identifiers, each
identifier being associated with content. Thus[,] during file
creation it is necessary to associate together the content with its
identifier. The association is defined in the XML file by
pairings of so-called “tags”,wherein each tag is a start tag or a
finish tag. Information between the start and finish tags is
proper to the XML identifier expressed in the tag.
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(Para. [0003]).
Definitions
(6) An email is defined as an electronic text message. The term
email also refers to the “exchange of text messages and computer files over a
communications network, such as a local area network or the Internet,
usually between computers or terminals.” (MICROSOFT COMPUTER
DICTIONARY 190 (5th ed. 2002)).
(7) A markup language is defined as “[a] set of codes in a text file
that instructs a computer how to format the file on a printer or video display
or how to index and link its contents” (id. at 328-329). Examples of markup
languages are Hypertext Markup Language (HTML) and Extensible Markup
Language (XML), which are used in Web pages, and Standardized
Generalized Markup Language (SGML), which is used for typesetting and
desktop publishing purposes and in electronic documents (id.).
(8) A tag in markup languages, such as SGML and HTML, is “a
code that identifies an element in a document, such as a heading or
paragraph, for the purposes of formatting, indexing, and linking information
in the document (id. at 511). In both SGML and HTML, a tag is generally a
pair of angle brackets that contain one or more letters and numbers” (id.).

PRINCIPLES OF LAW
“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
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nonobviousness.” In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)
(citation omitted).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and discussed circumstances in which a patent might be determined to
be obvious. Id. at 415 (citation omitted). The Court reaffirmed principles
based on its precedent that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. at 416. The operative question in this
“functional approach” is thus “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” Id. at 415, 417.

ANALYSIS
Representative claim 1 recites in relevant part:
annotating sections of the electronic document with a
plurality of the markup language tags, the markup language
tags being associated with at least one of a plurality of actions
and corresponding to at least one semantic category, wherein
the sections include at least one from a set of: a text string and a
graphical object, and wherein the plurality of markup language
tags are a part of the electronic document

(App. Br. 22, Claims App’x).
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Pandit
We find Pandit discloses an email associated with an email address
(e.g., goldberg@mail.loc.gov) (FF 3). We also find one of ordinary skill in
the art would recognize an email as an electronic document (see FF 6)
containing an email address in its header, and a text message in its body.
Thus, we find that the ordinarily skilled artisan would have readily
recognized that, by modifying the email address on the email, Pandit
suggests “annotating a section of the electronic document” (i.e., email).
We also find that the skilled artisan would have recognized that the
email address generally includes a set of markup language tags (see FF 8).
Further, we find the sections of the electronic document (i.e., email)
include at least one from a set of: a text string and a graphical object, as the
email includes text (see FF 3). Also, we find the plurality of markup
language tags are a part of the electronic document, as the email address,
which includes the plurality of markup language tags, is part of the
electronic document.
We also find Pandit teaches or suggests that the markup language tags
are associated with at least one of a plurality of actions, (1) as Figure 1d
illustrates that the actions (i.e., send mail and add to address book)
correspond to the email which has an email address (see FF 3), and (2) as
discussed above, it would have been obvious to one of ordinary skill in the
art that the email address is inclusive of markup language tags.
Further, since Appellants fail to provide an explicit definition for a
“semantic1 category”, we construe the cited expression according to its

1 Semantic is defined as “of or relating to meaning in language” (MERRIAM-
WEBSTER’S COLLEGIATE DICTIONARY 1129 (2003)).
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ordinary meaning. We broadly but reasonably construe a semantic category
as any category that defines a group of objects. In this instance, we find a
semantic category to be directed to a category of items that define the
structure of emails, including the email address, the markup language tags,
etc.
Accordingly, based on the discussion above, we find Pandit teaches or
suggests the disputed limitations of claim 1.
Rationale to Combine
As discussed above, Pandit teaches annotating an electronic document
by modifying the email address portion thereof including the markup
language tags thereon. Further, Park complements Pandit’s disclosure by
teaching that associating certain functions with plug-ins can be implemented
as a separate application in the form of a DLL (see FF 4). We thus find that
one of ordinary skill in the art would have readily appreciated that the
combination of Pandit and Park discloses known elements that perform their
ordinary functions to predictably result in an electronic document annotated
with plug-ins to automatically generate certain functions upon being
invoked. See KSR, 550 U.S. at 418-419. We therefore do not agree with
Appellants’ argument that there is insufficient rationale for the proffered
combination. It follows that Appellants have failed to persuade us of error
in the Examiner’s conclusion of obviousness with respect to representative
claim 1, and claims 2-4 which were argued based on claim 1.

35 U.S.C. § 103(a): claims 5-8, 11-21, and 24-27
Appellants argue that the cited claims are not unpatentable for the
reasons argued with respect to representative claim 1 (App. Br. 16-21). We
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addressed these arguments in our discussion of claim 1 above, and found
them unavailing. Thus, for the reasons set forth above with respect to
representative claim 1, we find Appellants have failed to persuade us of error
in the Examiner's conclusion of obviousness with regards to claims 5-8, 11-
21, and 24-27.

CONCLUSION
Appellants have not shown the Examiner erred in concluding that
claims 1-8, 11-21, and 24-27 are unpatentable under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-4, 13-17 and 25-27
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Pandit, McInnes, and Park.
We affirm the Examiner’s rejection of claims 5-8, 11, and 18-21
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Pandit and McInnes.
We affirm the Examiner’s rejection of claims 12 and 24 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Pandit,
McInnes, and Gandel.

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) (2009).

AFFIRMED

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nhl

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