Ex Parte Wason

Board of Patent Appeals and Interferences

Apr 29, 2010

10606547 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES R. WASON
____________

Appeal 2009-005075
Application 10/606,547
Technology Center 2100
____________

Decided: April 29, 2010
____________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
STEPHEN C. SIU, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-15, 19-35, and 43-50. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
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Invention
In Appellant’s invention, a method and apparatus for representing and
controlling documents including rich text for Web based applications and
browsers is provided so that editing of rich text can be facilitated within the
browsers. The rich text is represented in a memory structure so that various
formats may be flexibly maintained. Text, images, tables, links and the like
are represented in the memory structure, which may be maintained in
databases for eventual editing. A controller class and subsidiary classes
represent the rich text and provide methods to convert html to the memory
structure and back, representing the rich text in a relational database,
retrieving the rich text from a relational database, and presenting the rich
text for editing. Abstract.

Representative Claim
1. A method of representing and managing rich text for use
by Web based applications and browsers as implemented in a
machine, the method comprising the steps of:
providing one or more classes for use by the applications to at
least create and manage one or more rich text nodes in a memory
structure representation representative of rich text;
representing the rich text in the memory structure
representation; and
editing the rich text in a document using the memory structure
representation to perform editing functions on the document having
the rich text as managed and created by the one or more classes.
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Prior Art
Domini 6,085,206 Jul. 4, 2000
Prinzing 6,470,364 B1 Oct. 22, 2002
Prinzing 6,480,206 B2 Nov. 12, 2002

Examiner’s Rejections/Claim Status
Claims 1-15, 19, 20, 24-31, 33-35, 43-45, and 47-50 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Prinzing ′206 and
Prinzing ′364.
Claims 21-23, 32, and 46 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Prinzing ′206, Prinzing ′364, and Domini.
Claims 16-18 have been allowed.
Claims 36-38 are objected to as being dependent upon a rejected base
claim.
Claims 39-42 have been withdrawn from consideration as being
directed to a non-elected invention.

Claim Groupings
In view of Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Has Appellant shown that the Examiner erred in finding that the
combination of Prinzing ′206 and Prinzing ′364 teaches “providing one or
more classes for use by the applications to at least create and manage one or
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more rich text nodes,” where the applications are “Web based applications
and browsers” as recited in claim 1?

FINDINGS OF FACT
Prinzing ′206
1. A modular text editor formats and displays text by creating
style objects that format text elements arranged hierarchically. Style objects
may include formatting information for document text elements, paragraph
text elements, and character text elements. These style objects are then
arranged as subclasses according to the hierarchy of text elements. Next, the
text editor provides view objects to display text elements of the document.
Like the style objects, the view objects are arranged as subclasses according
to the hierarchy of text elements. Using information associated with the
style objects, the formatted text elements in the document are displayed
using the view objects. Abstract.
2. Figure 1 is block diagram of a computer system 100 including
a memory 102, a processor 104, a display device 105, a network interface
106, an input output device 108, a keyboard 110, a mouse 112, a secondary
storage 115, and a bus 114, which provides connectivity and communication
among these subsystems. Network interface 106 can be connected to a
Local Area Network (LAN), a Wide Area Network (WAN), or the Internet.
Bus 114 may use a standard bus protocol. Fig. 1; col. 3, ll. 33-42.
3. Memory 102 includes a GUI application 116, text 117, a
development kit (DK) 126, and an operating system 124. GUI application
116 may be a text editor, business software, a software development tool, or
any other software application with a GUI capable of formatting and
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displaying text 117. Text 117 may be organized as a hierarchy of text
elements including a document element, paragraph elements, and character
elements. DK 126 provides a variety of libraries, subroutines, classes,
drivers, and other software modules accessible to GUI application 116 using
application programming interfaces (API). Fig. 1; col. 3, ll. 43-53.

PRINCIPLES OF LAW
Claim Interpretation
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citations omitted). The Office must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification. Id. (citations omitted).

Obviousness
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). “The 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.

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ANALYSIS
Section 103(a) rejection of claims 1-15, 19, and 20
Appellant contends that the combination of Prinzing ′206 and Prinzing
′364 does not teach “providing one or more classes for use by the
applications to at least create and manage one or more rich text nodes,”
where the applications are “Web based applications and browsers” as recited
in claim 1. App. Br. 10; Reply Br. 3-5. Appellant states that Prinzing ′364
teaches an HTML editor that functions on a user’s computer, not through the
Internet. In contrast, according to Appellant, a Web based application is an
application that is used in an online environment and a browser is a software
application that enables a user to display and interact with a web page on the
World Wide Web or a local area network. App. Br. 10-11.
Claim 1 recites a method of representing and managing rich text “for
use by Web based applications and browsers,” and providing one or more
classes “for use by the applications” to at least create and manage one or
more rich text nodes. The “for use” clauses appear to represent a mere
intended use of the rich text. The claim does not positively recite any
actions performed by the “Web based applications and browsers.” Claim 1
thus sets forth a method of representing and managing rich text, without
requiring the Web based applications and browsers to do anything with the
rich text.
Furthermore, even if “Web based applications” were somehow
involved in performing one or more steps of the method of claim 1,
Appellant has not distinguished the phrase “Web based applications” from
the teaching of Prinzing ′206 and Prinzing ′364. The Specification states
that a “server . . . and an associated database . . . provide[] for a Web based
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application in communication with the client computer.” Spec. 6:8-13. A
rich text editor retrieves images or attachments from the database. Spec.
17:8-11. The rich text handling method can be performed by a suitably
programmed stand alone general purpose computer. Spec. 10:25 to 11:11.
Therefore, the phrase “Web based application,” when read in light of
Appellant’s Specification, encompasses a suitably programmed stand alone
general purpose computer that retrieves data from a database over a network,
and then edits the data using a rich text editor.
Prinzing ′206 teaches a computer system that stores text in a memory
and edits the text using a text editor executed by a general purpose
computer. The general purpose computer is connected to a secondary
storage and a network interface through a bus. The network interface can
connect the computer system to a local area network, a wide area network,
or the Internet. FF 1-3.
Retrieving text from a storage device connected to the Internet, and
then editing the text using a text editor running on a local computer, appears
to represent the combination of familiar elements according to known
methods that does no more than yield predictable results. Appellant has
provided no evidence tending to show that using a local computer to retrieve
text from a network storage device and then editing the retrieved text using a
text editor was “uniquely challenging or difficult for one of ordinary skill in
the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
We therefore sustain the § 103(a) rejection of claim 1. Appellant has
not provided separate arguments for the patentability of dependent claims 2-
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15, 19, and 20. Because we find the arguments for claim 1 unpersuasive, we
sustain the § 103(a) rejections of claims 2-15, 19, and 20.

Section 103(a) rejections of claims 21-35 and 43-50
Appellant provides remarks under multiple headings in the Appeal
Brief and, under some headings, quotes claim language. However, under the
applicable Board rule, reproducing claim language is not an argument for
separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”). Because
Appellant’s arguments are based on the premise that the combination of
Prinzing ′206 and Prinzing ′364 does not teach “Web based applications”
which we find unpersuasive as discussed in the analysis of claim 1, we
sustain the Examiner’s § 103(a) rejections of claims 21-35 and 43-50.

CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in finding that the
combination of Prinzing ′206 and Prinzing ′364 teaches “providing one or
more classes for use by the applications to at least create and manage one or
more rich text nodes,” where the applications are “Web based applications
and browsers” as recited in claim 1.

DECISION
The rejection of claims 1-15, 19, 20, 24-31, 33-35, 43-45, and 47-50
under 35 U.S.C. § 103(a) as being unpatentable over Prinzing ′206 and
Prinzing ′362 is affirmed.
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The rejection of claims 21-23, 32, and 46 under 35 U.S.C. § 103(a) as
being unpatentable over Prinzing ′206, Prinzing ′362, and Domini is
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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

msc

ROBERTS MLOTKOWSKI SAFRAN & COLE, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN VA 22102-8064