Ex Parte Sylthe

Board of Patent Appeals and Interferences

Oct 18, 2010

10106900 (B.P.A.I. Oct. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte OLAV A. SLYTHE
____________________

Appeal 2009-004587
Application 10/106,9001
Technology Center 2100
____________________

Before JAY P. LUCAS, THU A. DANG, and CAROLYN D. THOMAS,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed on March 25, 2002. Appellant claims the benefit under
35 U.S.C. § 119 of various applications dating to March 23, 2001. The real
party in interest is Arizan Corporation.
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.

Appeal 2009-004587
Application 10/106,900

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1 to 13 and 16 to 33
under authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). Claims 14 and
15 are cancelled (App. Br. 5).

We reverse.

Appellant’s invention relates to a method for delivering documents
from a server to wireless mobile devices. In the words of Appellant:
It is also desirable, however, to utilize these
documents with the wireless communications
medium and utilizing mobile wireless devices.
This presents a whole series of different problems,
since the bandwidth available can be on the order
of 4 to 48 kbps, which is not expected to increase
past 56 kbps in the near term.
The wireless devices typically attempt to
maximize battery life, while at the same time
minimizing weight and the device physical size.
Typically, the devices also include slow processors
and a minimal amount of memory. At the same
time, the devices have different, generally limited,
operating systems, screen resolution and limited
graphic rendering capabilities. Large documents
with a wide variety of formats are therefore very
unsuitable or impossible for use with these devices
in their standard format.
. . . .
A system which analyzes, organizes and
stores electronic documents in a document object
model using a common markup language. The
document object model is stored on a server the
content is delivered to the wireless devices in a
2
Appeal 2009-004587
Application 10/106,900

universal content system format. By utilizing the
document object model and the universal content
stream with a corresponding reader on the wireless
device, the electronic document is reduced to only
the essential content and the necessary format
information for transmission.

(Spec. 1, l. 22 to 2, l. 4 and Abstract, Spec. 35).
The following illustrates the claims on appeal:
Claim 1:
1. A method for delivering content to a portable
computing device, comprising:

receiving a request from the portable
computing device for content associated with a
document remote to the portable computing
device;

identifying one or more portions of the
document associated with the requested content;

reconstructing the identified portion or
portions of the document from elements of the
document stored in a Document Object Model
(DOM) Storage;

analyzing the portions of the document
associated with the requested content to identify
document type;

processing said portions in accordance with
the identified document type in order to improve
the document quality;

indexing the portions of the document
according to elements of the document content
stored in the DOM storage; and
3
Appeal 2009-004587
Application 10/106,900

transmitting the reconstructed identified
portion or portions to the portable computing
device for display thereon;

wherein the portable computing device
includes a document reader software application
for displaying the reconstructed identified portion
or portions of the document, the document reader
software application generating a graphical user
interface having a plurality of view modes,
wherein the software application determines which
of the plurality of view modes is optimal for
different types of data, and renders the data in the
optimal view mode or a combination of view
modes.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Solberg US 5,761,328 Jun. 02, 1998
Alam US 6,336,124 B1 Jan. 01, 2002
Kamemaru US 6,341,334 B1 Jan. 22, 2002
Jamtgaard US 6,430,624 B1 Aug. 06, 2002
Maslov US 6,538,673 B1 Mar. 25, 2003
Williams US 6,721,286 B1 April 13, 2004
DeMello US 2004/0268253 A1 Dec. 30, 2004

O’Hara, “"Microsoft Windows CE: A New Handheld
Computing Platform", Proceedings of the 1997 ACM
Symposium on Applied Computing 295-296 (April
1997).

4
Appeal 2009-004587
Application 10/106,900

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1 to 4, 16, 19, 22 and 28 stand rejected under 35
U.S.C. § 103(a) for being obvious over Maslov, Jamtgaard, Williams and
O’Hara.
R2: Claims 5, 7, 9 to 12, 17, 18, 20, 21, 23, 24, 29 and 30 stand rejected
under 35 U.S.C. § 103(a) for being obvious over Jamtgaard, Williams,
Maslov and O’Hara.
R3: Claim 6 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Maslov, Jamtgaard, Williams and O’Hara further in view of DeMello.
R4: Claim 8 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Maslov, Jamtgaard, Williams and O’Hara further in view of Alam.
R5: Claim 13 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Maslov, Jamtgaard, Williams and O’Hara further in view of
Kamemaru.
R6: Claim 25 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Maslov, Jamtgaard, Williams and O’Hara further in view of Alam.
R7: Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Maslov, Jamtgaard, Williams and O’Hara further in view of
Alam.
R8: Claim 31stands rejected under 35 U.S.C. § 103(a) for being obvious
over Maslov, Jamtgaard, Williams and O’Hara further in view of Alam and
Solberg.
R9: Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Maslov, Jamtgaard, Williams and O’Hara further in view of
Alam and Solberg.
5
Appeal 2009-004587
Application 10/106,900

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns
on whether the William reference teaches the analyzing and processing steps
of the method in the manner claimed.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant has invented a method for delivering documents from a server
to wireless mobile devices containing limited memory (Spec. 2, ll. 10,
11). The document is processed by various software modules in the
server depending on its document type so it takes as little memory
(space) as possible. (See Fig. 3; Spec. 6, 7 and 8.)
2. The Williams reference teaches distributing documents of different
formats to such devices as a printer or a scanner (Fig. 34, Col. 8, ll. 33 to
65). For each receiving device, a path is found for the document to be
distributed in a format acceptable to the device (Id.).

PRINCIPLES OF LAW

Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
6
Appeal 2009-004587
Application 10/106,900

obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).

The Court of Appeals for the Federal Circuit has cautioned against
unreasonably broad claim construction:
Although the PTO emphasizes that it was
required to give all “claims their broadest
reasonable construction” particularly with respect
to [the] use of the open-ended term “comprising,”
see Genentech, Inc. v. Chiron Corp., 112 F.3d 495,
501 (Fed. Cir. 1997) (“the open-ended term
comprising ... means that the named elements are
essential, but other elements may be added”), this
court has instructed that any such construction be
“consistent with the specification, ... and that claim
language should be read in light of the
specification as it would be interpreted by one of
ordinary skill in the art.” In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990). The PTO's construction
here, though certainly broad, is unreasonably
broad. The broadest construction rubric coupled
with the term “comprising” does not give the PTO
an unfettered license to interpret claims to embrace
anything remotely related to the claimed invention.
Rather, claims should always be read in light of the
specification and teachings in the underlying
patent. See Schriber-Schroth Co. v. Cleveland
Trust Co., 311 U.S. 211, 217 (1940).

7
Appeal 2009-004587
Application 10/106,900

In re Suitco Surface, Inc., No. 2009-1418, 2010 WL 1462294, at *4 (Fed.
Cir. 2010).

ANALYSIS
Arguments with respect to the rejections
of claims 1 to 13, 16 to 33
under 35 U.S.C. § 103 [R1- R9]

The Examiner has rejected all of the claims for being obvious over
various combinations of the references to Maslov, Jamtgaard, O’Hara and
Williams. Appellant has chosen to argue one aspect of these rejections,
namely that “none of the cited prior art teaches or suggest Applicant’s
claimed ‘processing said portions in accordance with the identified
document type in order to improve the document quality.’” (App. Br. 13,
bottom to 14, top) That limitation, in one form or another, appears in all
three independent claims.
The Examiner cites the Williams patent for the teaching of analyzing
portions of a document to identify the document type, particularly noting the
Abstract, third paragraph, and column 8, lines 33 to 65 (Ans. 7, middle).
Williams teaches a system and method for distributing documents to
various devices as in a network environment (col. 1, ll. 37 to 41). Williams
clearly teaches analyzing the document to identify the document type, which
in Williams is called its format (Id.; Abstract, ¶ 3). However, the
Appellant’s claim 1 further requires “processing said portions in accordance
with the identified document type in order to improve the document
quality.” The Examiner has not shown any processing of the document
aimed at improving its quality. Though the Examiner notes that the nature
8
Appeal 2009-004587
Application 10/106,900

of the improvement is not specified in the claim, (Ans. 26, bottom), that does
not give the Office license to ignore the limitation entirely. We find that
Williams, in general, and column 8, in particular, do not teach the processing
of a portion of the document as claimed. Though there is a discussion of
attributes of a document related to some quality factors (col. 8, bottom), we
see in column 9 that these factors result in a choice of encodings (col. 9, l.
33). That choice, however, is sent to the user (col. 9, l. 34). We do not find
a teaching of actually processing the document as claimed.
Williams is used in the rejection of all of the claims for this limitation.
We thus find this error to affect all of the rejections R1 to R9 of all of the
claims.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has shown that the Examiner erred in rejecting claims 1 to 13 and
16 to 33.
DECISION
We reverse the Examiner’s rejections R1 to R9 of claims 1 to 13 and
16 to 33.
REVERSED

peb

Jones Day (RIM) - 2N
North Point
901 Lakeside Avenue
Cleveland, OH 44114
9