Ex Parte SyltheDownload PDFBoard of Patent Appeals and InterferencesOct 18, 201010106900 (B.P.A.I. Oct. 18, 2010) Copy Citation 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 Copy with citationCopy as parenthetical citation